Mae Watson - [2024] ATMO 168

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Mae Watson to application under section 92 of the Trade Marks Act 1995 (Cth) by Whiplash’d Pty Ltd to remove trade mark number 2007748 (class 44) - Whiplash - in the name of Mae Watson

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Self represented

Applicant: IP Wealth Pty Ltd

Decision:

2024 ATMO 168

Trade Marks Act 1995 (Cth) – section 96 opposition – s 92(4)(b) application for complete removal excluding Western Australia – use established – s 102 not invoked - trade mark not to be removed

Background

On 18 May 2023, Whiplash’d Pty Ltd (‘Applicant’) filed an application under s 92(4)(b) of the Trade Marks 1995 (Cth)[1] (‘Removal Application’) for removal of the following registered trade mark in the name of Mae Watson (‘Opponent’) for all the services outside of the State of Western Australia:
[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).

Registration Number

Trade Mark

Services

Filing Date

2007748

Whiplash

(‘Trade Mark’)

Beauty salons; Beauty salon services; Beauty salons

(‘Registered Services’)

7 May 2019

The Opponent filed a Notice of Intention to Oppose removal of the Trade Mark on 27 July 2023 and a Statement of Grounds and Particulars (‘SGP’) on 22 August 2023. The Applicant filed a Notice of Intention to Defend on 26 September 2023.
The Opponent filed Evidence in Support (‘EIS’) on 21 December 2023. The Applicant did not file Evidence in Answer.
Once time for filing evidence had ended, both parties were given the opportunity to either request an oral hearing or to file written submissions. While neither party elected to be heard, the Opponent requested a decision without a hearing. I have decided this matter based on the particulars set out in the SGP and the evidence of the Opponent.
Evidence
The following EIS was filed:
·Declaration of Mae Usa Watson dated 21 December 2023 with Annexures MW-01 to MW-14 (‘Watson’).
Legal Framework
Part 9 of the Act deals with removal of trade marks from the Register for non-use.
In respect of this matter, s 92(4)(b) relevantly provides:
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)…
(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.

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2024] ATMO 168
Decision Date: 10 September 2024

CaseChat Overview and Summary

This matter concerned an application by Mae Watson (the Applicant) to remove a trade mark from the Register for non-use, pursuant to Part 9 of the Act. The Opponent, the registered owner of the trade mark, sought to retain the registration. The decision was made by Anne Makrigiorgos, Hearing Officer and Delegate of the Registrar of Trade Marks, based on written submissions and evidence filed by the parties.

The primary legal issue before the court was whether the Opponent had used the trade mark in Australia in good faith during the three-year period ending one month before the filing of the non-use application (the Relevant Period). Specifically, the court had to determine if the Opponent had discharged the onus of rebutting the allegation of non-use by establishing, on the balance of probabilities, that the trade mark had been used in good faith in relation to the specified services, or if there were circumstances constituting an obstacle to such use during the Relevant Period.

The Hearing Officer applied section 92(4)(b) of the Act, which outlines the grounds for removal of a trade mark for non-use. The relevant period for establishing use was the three years ending 18 April 2023. The Hearing Officer was satisfied, based on the evidence presented by the Opponent, that the trade mark had indeed been used in good faith in Australia during the Relevant Period for the registered services. Consequently, the Hearing Officer determined that section 102 of the Act, which allows for the imposition of conditions or limitations on registration, was not triggered.

Accordingly, the Hearing Officer ordered that the trade mark Registration 2007748 remain on the Register unamended. Furthermore, the Hearing Officer awarded costs against the Applicant in favour of the Opponent, following the general rule that costs follow the event.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

Once time for filing evidence had ended, both parties were given the opportunity to either request an oral hearing or to file written submissions. While neither party elected to be heard, the Opponent requested a decision without a hearing. I have decided this matter based on the particulars set out in the SGP and the evidence of the Opponent. Evidence The following EIS was filed:·Declaration of Mae Usa Watson dated 21 December 2023 with Annexures MW-01 to MW-14 (‘Watson’).Legal Framework Part 9 of the Act deals with removal of trade marks from the Register for non-use. In respect of this matter, s 92(4)(b) relevantly provides: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)…(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.Note 3:For when the registration of a trade mark is taken to have effect, see sections 72 and 239A. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the Trade Mark[2] and I confirm that five years since filing the Trade Mark has in fact passed.[2] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (sch 1, pt 3) as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards. Under s 92(4)(b), the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 18 April 2023 (‘Relevant Period’). The Opponent bears the onus of rebutting an allegation of non-use[3] by establishing, on the balance of probabilities,[4] that it has used the Trade Mark (or the trade mark with additions or alterations not substantially affecting its identity) in good faith in respect of any or all services identified in the Removal Application in the Relevant Period or that there were circumstances that were an obstacle to use in the Relevant Period.[5] [3] s 100(1)(c).[4] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of oppositions under s 52 of the Act.[5] s 100(3)(c).

Decision

Reasons for decision

In conclusion, s 102 is not in my view triggered at all in the present case.Decision Section 101 of the Act relevantly provides: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. I am satisfied that the Opponent used the Trade Mark in good faith in Australia during the Relevant Period for the Registered Services. Registration 2007748 may accordingly remain on the Register unamended.Costs The Opponent sought costs. I see no reason to depart from the general rule that costs follow the event. Accordingly, I award costs against the Applicant under s 221 in the relevant amounts under Schedule 8 of the Regulations.Anne MakrigiorgosHearing OfficerDelegate of the Registrar of Trade Marks10 September 2024

Ratio Decidendi

Legal Principle Established

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