Maccounting Pty Ltd T/a Success Tax Professionals Morley v TOHJO Co., Ltd

[2024] ATMO 189

TRADE MARKS ACT 1995

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

Re:Opposition by Maccounting Pty Ltd T/a Success Tax Professionals Morley to an application under section 92 of the Trade Marks Act 1995 (Cth) by TOHJO Co., Ltd. for removal of trade mark number 2240567 (9) – Miau and trade mark number 2240568 (9) – MiauMall – both in the name of Wei Perth Media Group Pty Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: Success Tax Professionals Morley Applicant: HopgoodGanim
Decision:	2024 ATMO 189 Trade Marks Act 1995 (Cth) - section 96 opposition to s 92(4)(a) application for removal – Opponent’s evidence does not show intention to use the Trade Marks for the Registered Goods or actual use of the Trade Marks for the Registered Goods – Exercise of discretion not appropriate – Trade Marks to be removed from the Register

Background

1. This decision is pursuant to an application made on 21 November 2022 under s 92(4)(a) of the Trade Marks Act 1995 (Cth) (‘Act’) by TOHJO Co., Ltd. (‘Applicant’) to remove the trade marks (collectively ‘Trade Marks’) detailed below from the Register of Trade Marks.  The application is made in respect of all the goods for which the trade marks are registered, that is, the application is for complete removal of the trade marks.

Registration No.	2240567
Lodgement date	11 January 2022
Goods	Class 9: Application software (‘Registered Goods’)
Owner	Wei Perth Media Group Pty Ltd (‘Owner’)
Trade Mark	Miau

Registration No.	2240568
Lodgement date	11 January 2022
Goods	Registered Goods
Owner	Wei Perth Media Group Pty Ltd
Trade Mark	MiauMall

1. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Act or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2. Maccounting Pty Ltd T/a Success Tax Professionals Morley (‘Opponent’) has opposed the application to remove the Trade Marks, filing a Notices of Intention to Oppose removal on 7 December 2022 and a Statement of Grounds and Particulars (‘SGP’) on 5 January 2023.  The Applicant filed Notices of Intention to Defend on 24 July 2023.

3. The parties filed the following evidence in this matter:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support (‘EIS’)
Yash Gandhi, Partner – Tax & Business Services (Success Tax Professionals Morley) (‘Ghandi declaration’)	16 November2023	1 Attachment
Evidence in answer (‘EIA')
Xuekun Liu, Chief Executive Officer of the Applicant	13 February 2024	1-7
Evidence in reply (‘EIR’)
None Filed

1. The Ghandi declaration lists a number of links and (implicitly) invites the Registrar to click on these links but no print-outs of the websites are annexed to the declaration.  It would not be appropriate for me, as delegate of the Registrar, to visit and have regard to the present content of the websites since extracts have not been included in the evidence and in any event the content may have changed since the date of the declarations.  Moreover, the grounds of opposition generally require me to consider the situation as it was at the filing date of the Trade Mark, which is earlier than the date of the Ghandi declaration.

2. Once the time allowed for filing evidence had ended, the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  The Applicant requested that the matter proceed to a decision without hearing and paid the appropriate fee.  As a result, the matter has been allocated to a delegate of the Registrar for a decision based on the written record.

3. I am a delegate of the Registrar and the matter has been allocated to me to decide, which I have done, on the basis of the following relevant material and the evidence listed earlier in this decision:

   ·The Application for Removal;

   ·The Notices of Intention to Oppose and SGP;

   The Relevant Provisions

4. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 relevantly provides:

   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;

5. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 which provides, relevantly to this matter:

   100  Burden on opponent to establish use of trade mark etc.

   (1) In any proceedings relating to an opposed application, it is for the opponent to rebut:

   (a) any allegation made under paragraph 92(4)(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 opposed application relates (relevant goods and/or services ); or
   (b)  any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services; or

   […]

   (3) For the purposes of paragraph 1(b), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time before the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

   (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

   [...]

6. I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[1]

   [1] Pfizer Products Inc. v Karam [2006] FCA 1663 (Gyles J) and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52 of the Act.

7. In accordance with s 101, I may decide to remove the Trade Marks from the Register for all or some of the goods identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Marks even if the grounds under which the application for removal was made are established.

8. I further note that a single bona fide use of one of the Trade Marks in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(a) for that mark,[2] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[3] Little weight is to be given to assertions of use which are not supported by documentary evidence.[4]  Use of the Trade Marks by an authorised user (as defined by s 8) is taken to be use of the Trade Marks by the Owner.[5] 

   [2] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

   [3] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

   [4] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Hearing Officer Forno). See also Ion Asset Management Ltd v Ion Trading UK Limited [2015] ATMO 124, [21] (Hearing Officer Wilson).

   [5] Act s 7(3).

9. The principles of when a trade mark has been used were recently summarised in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, in which the High Court noted the following:

   Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark.

   Whether a sign has been "use[d] as a trade mark" is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not "as a trade mark" was in Irving's Yeast-Vite Ltd v Horsenail, where the phrase "Yeast tablets a substitute for 'Yeast-Vite'" was held to be merely descriptive and not a use of "Yeast-Vite" as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.

   The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.[6]

   [6] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).

   Evidence

10. The EIS simply annexes a document titled ‘Project Overview & App Substantiation.  Miau & MiauMall – Your Local Lifestyle App’.  This project proposal refers to the development of a particular app called Miau.   The document is undated.  Furthermore, it contains no reference to the Owner whatsoever and is part of a declaration by what appears to be a partner in an accounting firm.  There is no explanation of any connection between the declarant/Opponent and the Owner, nor any connection between the project plan and the Owner.

11. The EIA provides evidence of the Applicant and its connection to and use of a similar mark and provides detailed criticisms of the Opponent’s evidence.  It also contains uncontested evidence that the links referred to in the EIS actually show use by the Removal Applicant of the Trade Marks.

    Discussion

12. Though the onus is, in terms of s 100, on the Opponent in this matter, that onus is not particularly arduous.  In Aston v Harlee Manufacturing Co[7] Fullagar J observed:

    […] the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on … a motion to expunge, the burden must rest on … the person aggrieved, of proving the absence of intention. Again, I do not think that “intention” in this connexion ought to be regarded as meaning an intention to use immediately or within any limited time.

    [7] [1960] HCA 47; (1960) 103 CLR 391; [1960] ALR 605; 34 ALJR 242, [21].

13. While this observation was made in proceedings under the Trade Marks Act 1955 (Cth), where the onus was on ‘the person aggrieved’ (that is, an applicant for removal), the principle has been held to be sound under the Act. In Structureco Inc v Starite Distributors Pty Ltd[8] the Registrar’s delegate Mr Forno said:

    Although the opponent to removal does bear the initial onus, in accordance with the legislation, I think that, in the case of applications for removal under s.92(4)(a), where the primary allegation regards the state of mind of an applicant for registration about whether it intends to use a mark in good faith, then that onus is not high. I believe that it is so low that it can be overcome if the opponent or its agent states that it was the case that the applicant for registration had an intention to use the mark in good faith. The onus should then shift to the removal applicant to support its case - perhaps by the production of some evidence which might support a circumstantial case of a lack of good faith, or by some other means.

    [8] [2000] ATMO 31.

14. Justice Wilcox went further in Nikken Wellness Pty Ltd v van Voorst:[9]

    I do not think [the Opponent] bears any onus in relation to the application for removal. It is for the applicant for removal […] to persuade the Court that the requirements of s 92(4) are satisfied.

    [9] [2003] FCA 816, [59].

15. The Opponent has clearly been put on notice that a lack of intention to use the Trade Marks for the Registered Goods is an issue in these proceedings.  The Opponent has provided no evidence of use of the Trade Marks by the Owner and no evidence of an intention to use the Trade Marks by the Owner.  The provision of an undated planning document by the Opponent (with no evidence of any connection to the Owner) does not show an intention to use or actual use or an intention to authorise or assign the mark.  An Owner that held a genuine intention to use/authorise/assign a trade mark should at the minimum be able to state that it held that intention and explain the nature of its actual intention.  It would have been within the Opponent’s power to either draft the declaration and/or provide supporting evidence showing the Owner’s intention to use (and/or actual use) the Trade Marks for the Registered Goods, were that the case.   This has not been done. 

16. While noting the relatively low bar placed on the Opponent to shift the onus on the Applicant to show that it lacked the intention to use the Trade Marks, I find that, due to the issues outlined above, the Gandhi declaration is insufficient to shift that onus.  I find that the Opponent has failed to satisfy the onus under s 100(1)(a) to show an intention to use at the relevant date or actual use of the Trade Marks by the Owner for the Registered Goods.  Equally the declaration provides no evidence of any obstacles to use and for completeness I have been unable to identify any such obstacles.   

    Registrar’s Discretion

17. To exercise the discretion in s 101(3) I must be positively satisfied that, despite the lack of use or obstacles to use, it is reasonable to not remove the Trade Marks in respect of the Registered Goods.[10] The burden of persuasion in this regard falls on the Opponent.[11]

    [10] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ).

    [11] Ibid.

18. The Opponent has made no submissions in respect of the discretion. I therefore do not consider it appropriate to exercise my discretion not to remove the Trade Marks in respect of any of the Registered Goods.  Specifically, there is no evidence that the Owner has ever used the Trade Marks or intends to use the Trade Marks in the future in Australia for any of Registered Goods.  Given the importance of the integrity of the Registrar I do not consider it appropriate to exercise my discretion not to remove the Trade Marks in respect of any of the Registered Goods.

    Decision

19. The Opponent has not established its opposition to removal. Accordingly, I direct that registrations 2240567 and 2240568 be removed from the Register one month from the date of this decision.  If the Registrar is served with a notice of appeal I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registrations be dealt with as the Court sees fit.

    Costs

20. The Applicant has been successful in relation to the application for removal of trade mark numbers 2240567 and 2240568 and has requested its costs. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs in respect of trade mark number 2240567 against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations. In respect of trade mark number 2240568 I award costs against the Opponent to be taxed in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd[12].  

    [12] [2001] ATMO 78 (Hearing Officer Williams).

    Nicholas Smith
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    2 October 2024