MBF Finances Pty Ltd v PizzaExpress Limited

[2018] ATMO 155

TRADEMARKSACT1995

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

Re:Opposition by MBF Finances Pty Ltd to application under section 92 of the Act by PizzaExpress Limited to remove trade mark number 1128502 (43) - Pizza Express Logo - in the name of MBF Finances Pty Ltd

DELEGATE:

Michael Kirov

REPRESENTATION:

Opponent: Gabriella Rubagotti of Counsel, instructed by Mallon & Co.

Applicant: Jane Owen assisted byRebecca Currey, both of Bird & Bird

DECISION:

2018 ATMO 155

Opposition under s 96 of the Trade Marks Act  1995: s 92(4)(b) considered - use shown for all of the registered services, but only in Western Australia – geographical limitation under s 102 considered but found inapplicable - Trade Mark to remain on the Register unamended.

Background

1. MBF Finances Pty Ltd (“the Opponent”)  is the registered owner of trade  mark registration 1128502 (“the Registration”), relevant details of which are as follows: Registration Number: 1128502

   Registered From:  18 August 2006

   Services:Class 43: Food preparation; preparation of food and drink; preparation of take-away and fast food; providing food and drink; restaurant services for the provision of fast food; take away food services; takeaway food and drink services; preparation of food and drink; providing food and drink; takeaway food and drink services; preparation of take-away and fast food; restaurant services for the provision of fast food

   (“the Registered Services”)

   Trade Mark:                 (“the Trade Mark”)

   Endorsement:  Provisions of sub-section 44(4) applied.

1. On 5 August 2016 PizzaExpress Limited, a company incorporated in the United Kingdom (“the Removal Applicant”), filed an application based on s 92(4)(b) of the Trade Marks Act 1995 (“the Act”) seeking removal of the Registration from the Register for all of the Registered Services, alleging that the Trade Mark was not used

in good faith during the three year period ending on 5 July 2016 (“the Relevant Period”). I mention that much of the Removal Applicant’s evidence and its attorney’s submissions at the eventual hearing centered on apparent inconsistencies between the recorded owner(s) of the Trade Mark and the actual user(s) of the mark during the Relevant Period and so the chronology which follows attempts to shed some light on the ownership issue.

1. On 17 October 2016 Paul Mallon, a solicitor and now principal of the firm Paul Mallon & Co, filed a Notice of Intention to Oppose removal in the names of two trustees of two differently named trusts, namely “Siobhan Farrell ATF the Siobhan Farrell Family Trust” and “Mark Farrell ATF the Mark Farrell Family Trust” (“the original opponents”). Presumably this was done in error, given at that time the then recorded (and original) joint owners of the Registration were only identified on the Register with a single trust, “the Siobhan & Mark Farrell Family Trust” (“the SMF Family Trust”), with the joint owners recorded as “Siobhan Farrell as Trustees [sic]1 for the [SMF Family Trust]” and “Mark Farrell as Trustees [sic] for the [SMF Family Trust]”.  It is convenient here to note that Siobhan and Mark Farrell are siblings.

1. On 17 November 2016 Mr Mallon filed a Statement of Grounds and Particulars (“SGP”), this in the name of “Siobhan Farrell & Mark Farrell” (“the Farrells”).

1. On 25 November 2016 the Removal Applicant’s then representative, Allens Patent & Trade Mark Attorneys, filed a Notice of Intention to Defend.

1. On 7 March 2017 Mr Mallon requested an extension of time for the Farrells to file their evidence in support, explaining in an accompanying Statutory Declaration that he was instructed by Mark Farrell in particular but that Mr Farrell had had difficulties in providing full instructions due to various mergers and moves affecting his (Mr Mallon’s) firm and contact details.  A two month extension was subsequently granted.

1. On 5 May 2017 Mr Mallon filed the evidence in support, being a Statutory Declaration  made  by Mark  Farrell that  day,  with  Annexures MBF-1  to  MBF-7

1 I suspect that the odd pluralisation  here is an artefact from a previous iteration of the  relevant software used by IP Australia that had the owners’ names more simply rendered as “Siobhan Farrell and Mark Farrell as Trustees for the [SMF FamilyTrust].”

(“Farrell 1”). I note that Farrell 1 bears a heading indicating both the opponent to the non-use application and the owner of the Registration to be “Mark Farrell” rather than the Farrells collectively. I will discuss Farrell 1 in more detail in due course, but for now note that in it Mr Farrell provides, inter alia, details of a number of pizza restaurants with which he has been involved since 1994 which he says provided the Registered Services under the Trade Mark during the Relevant Period (“the Restaurants”).

1. On 11 May 2017 the law firm Bird & Bird advised IP Australia that it had replaced Allens as the Removal Applicant’s representative.

1. On 24 May 2017 Mr Mallon filed a “change of name” request with IP Australia purporting to amend the name of the owners of the Registration2 from what was then recorded on the Register, namely “Mark Farrell as Trustees [sic] for [the SMF Family Trust] & Siobhan Farrell as Trustees [sic] for [the SMF Family Trust]” to “Mark Farrell.”

1. On 6 July 2017 Bird & Bird requested that the Registrar of Trade Marks (“the Registrar”) require “Mark Farrell ATF the Mark Farrell Family Trust” to produce a number of documents pursuant to her power under s 202(c) of the Act. The attorneys’ request stated in part:

   5.  …[The Removal Applicant] notes that Mr Farrell asserts in [Farrell 1] that there has been use of the [Trade Mark] by the joint owners of the mark (for example at paragraphs 7, 9, 10, 21, 29, 40, 52 and 62).

   6.   However, Mr Farrell provides no documentary evidence to support use as joint owners, such as any agreement with Siobhan Farrell ATF the Siobhan Farrell Family Trust3 or other documents that would support this assertion.

1. The list of documents sought included the “Trust Deed for the [SMF Family Trust] (the  Applicant  [sic]  for  the  Trade  Mark)”  and  the  “Agreement  establishing  or

2 In addition to the Registration the request also related to two pending applications then apparently in the names of the Farrells, being 1794447 PIZZA EXPRESS and 1794456 for a mark identical to the Trade Mark, both covering goods and services in Classes 29, 30, 39 and 43.

3 Presumably  Bird & Bird obtained this (possibly non-existent) trust name from the names of the original opponents identified, apparently in error, in the Notice of Intention to Oppose removal filed by Paul Mallon on 17 October 2016, since the name appears never to have been recorded on the Register.

recording the partnership” Mr Farrell refers to in paragraph 1 of Farrell 1, where Mr Farrell says he is:

…one of the co-founders of Pizza Express, a business established by myself and my sister Siobhan Farrell in 1994. The business at that time was a partnership of myself and Siobhan Farrell as trustees for our respective family trusts trading as “Pizza Express”…

1. I mention that Mr Farrell’s reference here to “our respective family trusts” is unclear to me because, as Mr Mallon later explains (see paragraph 15 below), the  SMF Family Trust was apparently not established until 2000. Presumably, however, the Farrells essentially operated the business as a partnership for their own benefit between 1994 and 2000 before they entered into the SMF Family Trust arrangement.

1. Also sought by Bird & Bird was production of, inter alia, copies of agreements for leases and/or purchases of assets or  premises relating  to  each of the Restaurants identified  in Farrell 1. My understanding  is that  most of the requested documents were in due course provided to the Removal Applicant’s attorneys, although this was done too late for any to be included in the Removal Applicant’s evidence in answer.4 Most  of  the  documents  in  question  were  however  included  in the  Opponent’s evidence in reply, described later in this decision.

1. On 21 August 2017 Mr Mallon wrote to IP Australia withdrawing the 24 May 2017 “change of name” request described earlier and in its place filing a request  for recordal of a “change of ownership” of the Registration from the originally recorded owners, namely “Mark Farrell as Trustees [sic] for [the SMF Family  Trust]  & Siobhan Farrell as Trustees [sic] for [the SMF Family Trust],” to “MBF Finances Pty Ltd”, (being the Opponent in this matter). It is convenient here to note that Mark Farrell is and has always been the sole shareholder and Director of the Opponent.

1. Accompanying Mr Mallon’s request was an explanatory letter and a copy of a Deed headed “Deed of Variation & Renunciation - The Mark Farrell Family Trust – Formerly the Siobhan & Mark Farrell Family Trust” (“the Variation Deed”). This Deed  was  apparently  executed  on  2 October 2013  by the  parties  to  it,  namely

4  33 pages of documents were provided to the Removal Applicant’s attorneys on 20 September 2017 and a further 353 pages on 22 September, the balance apparentlynot having been located.

(1) Siobhan Farrell and Mark Farrell as “the Retiring Trustees,” (2) MBF Finances Pty Ltd as “the new Trustee,” (3) Siobhan Farrell (as “the Renouncing Beneficiary”) and (4) Siobhan Farrell and Mark Farrell (as “the Guardian and Appointer”). Mr Mallon’s accompanying explanatory letter is set out below (with original emphasis):

We refer an [sic] application we made in relation to the change of ownership of the above trade marks and applications5 made 3 July 2017 [sic]6 (eService History Batch No 0001313698). In so far has [sic] this application relates to a change in ownership, this application has not yet been actioned and we ask that it be withdrawn.

When we made the above application for change of ownership we were only partially informed by our client as to its trust structure.

We enclosed [sic] a new application for change of ownership and we draw your attendion [sic] to the following which will clarify our client’s position.

We act for the trustee of the Mark Farrell Family Trust ABN 96874255639.

The history of the Mark Farrell Family Trust ABN 96874255639 (“Trust”) is as follows:

On 1 July 2000,7 the Trust was established and original [sic] trustees were Mark Farrell and Siobhan Farrell and the original name of the Trust was the “Mark & Siobhan Farrell Family Trust”.

On 18 August 2006, the original trustees of the Trust (Mark Farrell and Siobhan Farrell) applied for trade mark 1128502 as trustees for the “Mark

& Siobhan Farrell Family Trust”.

On 2 October 2013, by [the Variation Deed] the trustees of the trust [sic] were changed from Mark Farrell and Siobhan Farrell, to MBF Finances Pty Ltd. The name of Trust [sic] was changed to the Mark Farrell Family Trust. This deed effectively removed Siobhan Farrell from being a trustee and beneficiary of the Trust and the pizza restaurant business run by Trust [sic]. Mark Farrell thereafter effectively controlled the Trust and the business conducted by the Trust through his corporate trustee company MBF Finances Pty Ltd.

We enclose a true copy of the [Variation Deed] dated 2 October 2013 between Siobhan Farrell, Mark Farrell and Siobhan Farrell,[ 8] confirming that Siobhan Farrell is no longer a Trustee and appointing MBF Finances Pty  Ltd  as  trustee.    Clause 1.4  requires  the  “Retiring  Trustee”  (i.e.

5 Being the Registration and the pending applications 1794447 and 1794456 described in footnote 2.

6 In fact, as I have indicated, the request referred to was made on 24 May 2017.

7  Mr Mallon is apparently mistaken here, since the original Trust Deed was executed, and the Trust established, on 12 May 2000.

8 As I mentioned earlier, MBF Finances Pty Ltd was also a party to the Variation Deed in its capacity as “thenew Trustee.”

Siobhan Farrell) to [sic] all things to assign the assets of the Trust to the New Trustee, i.e. MBF Finances Pty Ltd.

Siobhan Farrell, Mark Farrell’s sister is estranged from Mark Farrell and will not assist Mark Farrell or MBF Finances Pty Ltd is [sic] any regard.

Our client relies on the [Variation Deed] to confirm that there is an assignment of all assets in the trust [sic] including Trade Marks 1128502, 1794456 & 1794447 to the new trustee of the Trust, MBF Finances Pty Ltd who holds those marks as trustee under the Trust.

We look forward to your response.

1. As from 2 October 2013 then, being early in the Relevant Period, the Variation Deed brought two notable changes relevant to the Registration. Firstly, it changed the name of the SMF Family Trust to “the Mark Farrell Family Trust.” Secondly, and more significantly as far as the legal ownership of the Registration is concerned, it effectively assigned it from the Farrells as joint owners to the Opponent, Mr Farrell’s company MBF Finances Pty Ltd. I mention that IP Australia responded to Mr Mallon on 18 September 2017 confirming that recordal of the Opponent as owner of the Registration had been made as requested.

1. On 22 August 2017 the Removal Applicant’s evidence in answer was filed, this consisting of the following Statutory Declarations by solicitors with Bird & Bird:

   ▪  Liam    McGuire    made    21 August 2017,    with     Annexures LM-1     to    LM-27 (“McGuire”)

   ▪  Rebecca  Currey  made  21 August 2017,  with  Annexures RNAC-1  to  RNAC-3 (“Currey”)

1. On 30 October 2017 the Opponent’s evidence in reply was filed, being a Statutory Declaration made by Mark Farrell that day, with Annexures MBF-8 to MBF-24 (“Farrell 2”).  Mr Mallon subsequently requested that the matter be heard.

1. On 25 January 2018 Mr Mallon requested that the present opposition proceed in the name of MBF Finances Pty Ltd rather than that of the original opponents. This request was granted pursuant to s 96A and reg 9.13(2) and both parties were formally advised.

1. I heard the matter as a delegate of the Registrar of Trade Marks  in Canberra on 3 September 2018.    Gabriella  Rubagotti of Counsel,  instructed  by Mallon  &  Co,

appeared for the Opponent. Ms Rubagotti’s oral submissions were supplemented by written submissions emailed to the Removal Applicant’s representatives and to me by Mr Mallon on 21 August 2018.

1. Jane Owen, a Principal of Bird & Bird, assisted by Rebecca Currey of the same firm, appeared for the Removal Applicant. Ms Owen’s oral submissions were supplemented by written submissions emailed to the Opponent’s representatives and to me on 27 August 2018.

1. On the night of 28 August 2018 Mr Mallon emailed me attaching a Statutory Declaration he had made that day, with Annexures PGSM 1 to PGSM 4 (“Mallon 1”). His accompanying letter stated that

   At the hearing the Opponent will seek to rely on the attached Statutory Declaration of PGS Mallon made today pursuant to Regulation 21.19 for the reason set out in paragraphs 3-5 of the Declaration.

1. I replied by email to the parties on 29 August, stating in part:

Please be aware that  reg 21.19 should  be  read  in   conjunction   with reg 21.15(4). A copy of the relevant page from Part 51.2.6 of the TMO Manual of Practice and Procedure, which discusses the issue of out of time evidence under reg 21.15(4), is attached for your ease of reference.

As you will note from this, there is a formal procedure in place for an application made under 21.15(4) and admission of the evidence in question is by no means guaranteed. Among other things, it is contingent upon the Registrar (or her delegate) being satisfied that it is “crucial” to the eventual outcome of the proceedings.

That said, as the Registrar’s delegate and pursuant to reg. 5.19, I direct that, if it chooses to do so, MBF Finances Pty Ltd (“MBF”) has until 4.00 pm (Canberra time) on Thursday, 30 August next (tomorrow) to make an application in accordance with the procedure set out in Part 51.2.6 of the TMO Manual of Practice and Procedure and also to copy PizzaExpress Ltd’s attorneys and me with that application by email.

Should such an application be made then I propose hearing both parties’ oral submissions on the issue (if any) at the commencement of the substantive hearing on 3 September. Should I then determine to take the evidence in question into account I will allow PizzaExpress Ltd 14 days to file any evidence or submissions in response it wishes me to consider. There would not then be any right of reply from MBF and I would issue my decision on the removal application itself as soon as I am able thereafter.

1. Mr Mallon subsequently filed a formal application as directed, with supporting submissions arguing for Mallon 1 to be admitted in the proceedings.

1. Around midnight on 2 September, a Sunday and the eve of the scheduled hearing, Mr Mallon again emailed me with a Statutory Declaration he had made that day, with Annexures A to G (“Mallon 2”).  The accompanying email said no more than:

   Please find attached Statutory Declaration of PGS Mallon made today and uploaded to Objective Connect which our cleint’s [sic] counsel will [sic] Ms Rubagottiwill talk to at the hearing tomorrow.

1. I heard Ms Rubagotti’s and Ms Owen’s submissions on the admissibility of the two Mallon declarations at the commencement of the hearing on 3 September. After some discussion on whether or not the proposed further evidence would likely be “crucial” to my eventual decision in the matter, Ms Rubagotti withdrew the requests to rely on Mallon 1 and Mallon 2.

1. I confirm, accordingly, that in deciding the removal application I am only taking into account the parties’ properly filed evidence described earlier, namely Farrell 1 and 2 in the Opponent’s case and McGuire and Currey in the case of the Removal Applicant.

The Law

1. Insofar as relevant to this matter, s 92 of the Act is reproduced below:

92 Application for removal of trade mark from Register etc.

(1)  Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register.

(2)  The application:

(a)  must be in accordance with the regulations; and

(b)  may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

(3)  An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person aggrieved may apply to the court for an order directing the Registrar to remove the trade mark from the Register.

Note:  For prescribed court see section 190.

(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 s.102 on the registration of the trade mark so that its registration does not extend to that place or export market.

(5) …

1. Section 93(2) of the Act specifies that an application under s 92(4)(b) “may not be made before a period of 5 years has passed from the filing date in respect of the application for the registration of the trade mark.” This requirement is satisfied here since the Registration was filed in 2006.

1. Sections 100(1)(c) and 100(3) of the Act indicate that the Opponent bears the onus of rebutting the allegation made under s 92(4)(b), either by establishing 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 during the Relevant Period,

   or that there was a relevant obstacle to use. I proceed on the basis that the standard of proof required of the Opponent is on the balance of probabilities.9

1. As foreshadowed, much of the Removal Applicant’s submissions were aimed at claimed discrepancies in the Opponent’s evidence as between the recorded registered owner(s) of the Trade Mark and the actual user(s) of the mark during the Relevant Period. Section 100(3)(b), which is relevant in this regard, is set out below:

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

(1) and (2)…

(3)  For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period

9 Following Gyles J’s approach in  Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6]-[26] with respect to oppositions under s 52 of the Act and Telstra Corporation Limited v Phone Directories Company Pty Ltd (2015) 116 IPR 207 at [132]-[133] where the Full Federal Court (Besanko, Jagot & Edelman JJ) affirmed Gyles J’s approach. See also the discussion on this point by Hearing Officer Thompson in TTT Moneycorp Limited v Monecor (London) Limited [2018] ATMO 134 at [10]-[11].

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)  …; 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.

1. The Removal Applicant also relied on s 102 of the Act in support of its submission that, even were I to find relevant use, that use had clearly only taken place in Western Australia and that I should accordingly impose a territorial condition or limitation on the Registration such that use of the Trade Mark be restricted to that State only. Section 102, which gives the Registrar the discretion to do this, is set out below:

102 Determination of opposed application--localised use of trade mark

(1)  This section applies if an application for the removal of a trade mark (challenged trade mark) from the Register is made on the ground referred to in paragraph 92(4)(b) and:

(a)  the applicant is the registered owner of a trade mark that is substantially identical with, or deceptively similar to, the challenged trade mark and is registered in respect of the goods and/or services specified in the application subject to the condition or limitation that the use of the trade mark is to be restricted to:

(i)   goods and/or services to be dealt with or provided in a particular place (specified place) in Australia (otherwise than for export from Australia); or

(ii)  goods and/or services to be exported to a particular market (specified market); or

(b)  the Registrar or the court is of the opinion that such a trade mark may properly be registered in the name of the applicant with that condition or limitation.

(2)  If the Registrar or the court is satisfied:

(a)  that the challenged trade mark has remained registered for the period referred to in paragraph 92(4)(b); and

(b)  that during that period there has been no use, or no use in good faith, of the challenged trade mark in relation to:

(i)   goods or  services dealt  with or  provided  in the  specified place; or

(ii)  goods or services to be exported to the specified market;

the Registrar may decide, or the court may order, that the challenged trade mark should not be removed from the Register but that the registration of the trade mark should be subject to the conditions or limitations that the Registrar or the court considers necessary to ensure that the registration does not extend to the use of the trade mark in relation to:

(c)  goods or services dealt with or provided in the specified place; or

(d)  goods or services to be exported to the specified market.

1. Finally, if relevant use cannot be shown for some or any of the Registered Services s 101(1) gives me as the Registrar’s delegate the discretion to remove the Trade Mark “in respect of any or all of the [Registered Services]”, whilst s 101(3) explicitly provides that discretion may be exercised in the Opponent’s favour if I am satisfied it is reasonable to do so.

The Evidence

1. As mentioned, Farrell 1 begins with Mr Farrell saying that he is “one of the co- founders of Pizza Express, a business established by myself and my sister Siobhan Farrell in 1994” as “a partnership of myself and Siobhan Farrell as trustees for our respective family trusts trading as “Pizza Express”, before going on to say that “Pizza Express is owned by myself as trustee for my family trust.” He thereafter refers to the Pizza Express business and/or to him and his sister Siohban Farrell collectively using the pronouns “we”, “us” and “our”.  As Mr Farrell explains:

   4.  As I have mentioned, my sister Siobhan Farrell and I commenced our business under the name and style “Pizza Express” in 1994. In February 1994, Siobhan Farrell approached me with a proposition to purchase a pizza restaurant which she was working in in Hilton WA.

   5.  We purchased the restaurant for approximately $180,000. I provided the finance required. Through the purchase of the restaurant we were assigned all the goodwill in the restaurant, including all rights in the Pizza Express brand, and the [as yet unregistered Trade Mark]. The restaurant was sold to us bya party who had started the restaurant.

   6.  I was informed by the vendor of the Pizza Express Hilton restaurant, and believe it to be true, that the vendor of the restaurant had been operating the Pizza Express Hilton restaurant under the unregistered Trade

Mark since at least 1986. For clarity, I confirm that the trade mark used in Pizza Express Hilton restaurant was identical to [the Trade Mark], but it was not registered at that time.

7.  After purchasing the Pizza Express Hilton restaurant, my sister and I operated the restaurant for several years and continued to use the Pizza Express brand and the unregistered Trade Mark.

1. Mr Farrell then describes the subsequent increase in the number of the Restaurants, beginning with an outlet in Morley, WA:

   9. In 1999, we purchased an existing pizza restaurant in Morley WA and rebranded the restaurant “Pizza Express” and used the unregistered Trade Mark to advertise and promote the restaurant. Under the agreement, we purchased all plant & equipment thereafter we operated this Pizza Express restaurant as the second restaurant in the Pizza Express restaurant chain.

1. Mr Farrell provides similar information regarding the opening of further restaurants in Western Australia, being at Riverton in 2005, at Mosman Park in 2008, at Scarborough in 2014, at Cockburn in April 2016 and, albeit after the Relevant Period, at Duncraig in WA in December 2016 and Kings Cross in Sydney in March 2017. A further store, in Baldivis, WA, was having its final fit out at the time Farrell 1 was made and was expected to open later that month. My understanding from all of the evidence before me is that the Kings Cross restaurant and possibly one or two others are no longer trading but that the remaining restaurants in Western Australia have done so continuously since their inception.

1. Mr Farrell also highlights the relationship which has developed between the Pizza Express business and Stockland Group since the opening of its Riverton, WA restaurant in 2005. Stockland Group is a large business which owns, manages and develops shopping centres around Australia and in whose shopping centres several of the Restaurants are now located. Mr Farrell says that, “Pizza Express developed a serious commercial relationship with the Stockland Group and were [sic], from December 2005 onwards, actively encouraged by Stockland to take up pizza restaurants in Stockland shopping centre [sic] in Western Australia, Victoria and New South Wales.” Mr Farrell’s dealings with Stockland Group were principally through Stockland staff based in Melbourne and Sydney and, as Mr Farrell puts it:

   33. So, by 2009, Pizza Express was well known to Stockland in Sydney and Melbourne through their Leasing office and their Business Design

offices and the Stockland representative informed me that they were looking to get Pizza Express involved in leasing additional premises in Stockland shopping centres in WA, NSW and Victoria.

1. While the Pizza Express business has not to date opened a restaurant outside Western Australia other than the Kings Cross, Sydney restaurant, Mr Farrell does describe two, ultimately inconclusive, attempts to do so in Victoria:

   53.  In 2015 and into 2016, I had negotiations to purchase a lease from a party who leased premises at 308 Bridge road Richmond Victoria, with a view to establishing a Pizza Express restaurant in Victoria.

   54.   Those negotiations were ultimately unsuccessful.

   55.  In May and June 2016, I had a number of meeting and telephone discussions with Troy Gleeson, Stockland’s regional leasing manager for Victoria and WA where explored [sic] the possibility of Pizza Express leasing premises at Stockland Shopping centre in Victoria at their sites at The Pines, Tooronga, Highlands, Point Cook. The meeting took place in in Perth.

1. As for the Restaurants in Western Australia, which are all in or around Perth, Mr Farrell describes various advertising and promotional arrangements made over the years. He says that in 2005 the Pizza Express business engaged Entertainment Publications Australia Pty Ltd (“EPA”) to promote its services through the distribution of discount vouchers to the public, often via “high-profile corporate social clubs, charities and community groups who often sell them as a fundraiser.” The relationship with EPA has endured and attached to Farrell 1 (MBF-2) is a copy of “a true sample of [an] EPA agreements [sic] for one of the Pizza Express restaurants” dated 2 December 2013.

1. Mr Farrell describes a similarly enduring relationship with “Shop A Docket Australia” (“SADA”)  dating from 2005.  SADA  “offers  couponing  and  promote [s ic ]  offers and discounts on the back of shopping receipts.” He says that:

   18. Since 2005 our name and the Trade Mark has [sic] been placed on the back of Coles, Woolworths & IGA till receipts in Perth, offering discounts

   & promotions when presented with a customer purchase. Attached hereto and marked MBF-3 is are [sic] email correspondence approving artwork for a marketing campaign in 2013-2014.

1. I will return to this issue, but it is convenient here to note in passing that at the hearing Ms Owen questioned whether the “artwork” shown in Annexure MBF-3, which is

reproduced below, in fact showed the Trade Mark as registered “with…alterations…substantially affecting its identity” because the words “Fast, fresh, & flamebaked…” (“the Tagline”) were absent:

1. Mr Farrell also  mentions that  from 2006 the Pizza Express business has been in relationships with “nationwide online ordering platforms” EatNow and Menulog:

   23.   The Eatnow website <eatnow.com.au> is avenue [sic] for customers to order takeaway meals online, for delivery or pick up from their local restaurants. They now have Android and iPhone apps that perform this function.

   24.   Eatnow offers a choice of varying cuisines including Pizza, where our name and trade mark has appeared since 2006.

   25.   Similarly, Menulog.com.au founded in Sydney in 2006 is one of Australia’s largest online food ordering platforms with over 8000 restaurants, including our Pizza Express name and the Trade Mark.

1. Noting that he had “secured the URL for the business in or about 2003,” Mr Farrell says that he:

   27.   …designed and launched the Pizza Express website to advertise and promote the Pizza Express restaurant chain by reference to the Pizza Express name and brand and the Trade Mark.

   28.   The website first appeared at in or about August 2009. Attached hereto and marked MBF-4 is a true screenshot from the Way-back-machine Archive for 29 September 2009 showing the Pizza Express name and brand and the Trade Mark.

1. Attachment MBF-4 is shown below.  I note in passing that, while of no consequence, the screenshot in question indicates the website was then “under construction.”  With

relevance to Ms Owen’s submissions at the hearing, I note too that “the Trade Mark” is apparently being used on the signage shown absent the Tagline:

1. Mr Farrell also discusses the relationship between the Pizza Express business and a Melbourne based marketing firm called “Zwift”. Zwift provides the business with services including website management, updates and tracking, customer database management, online ordering and promotions, digital marketing, search engine optimization and email campaigns. Since 2012, he says, Zwift has “been responsible for all of Pizza Express’ IT and marketing.” Mr Farrell attaches copies of some eight contracts between Zwift and him as “Founder” of the relevant business name identified in the contracts, (such as “Pizza Express Como” or “Pizza Express Duncraig”). The contracts are dated between November 2014 and March 2017, the majority being within the Relevant Period. He attaches a copy of an analysis by Zwift apparently undertaken “in early 2017” of hits on the < website, which Mr Farrell says shows “that a significant number of hits to the website are from locations outside WA.”

1. Mr Farrell also describes the establishment of a warehouse facility next to the business’ Cockburn, WA restaurant during the Relevant Period:

   64.  The Cockburn Premises also house the Pizza Express WareHouse established April 2016.

   65.   Again, we completed of [sic] fitout, acquisition and installation  of large 100m3 cool-room, forklift, trolley jacks, and palletisers.

   66.  This warehouse centre operates to allow for the receipt for [sic] all inwards goods to be dispatched to all Pizza Express outlets in WA.

1. Mr Farrell also lists some 21 sporting clubs, educational institutions and churches which “we have sponsored…at times using Pizza Express name [sic] and the Trade Mark.”

1. Finally, Mr Farrell goes into some detail concerning his hopes and efforts, and the impediments encountered, in expanding the Restaurants  beyond Western  Australia. He mentions such things as the logistics involved in transferring experienced staff to the East Coast who would be able to work without his day to day oversight and be able to train new local staff, the costs involved in finding  and  leasing  suitable premises on the kind of favourable terms available in WA, purchasing new equipment, establishing relationships and favourable credit arrangements with a new network of suppliers and tradesmen, and establishment of a fleet of home delivery vehicles, amongst the various obstacles to expansion encountered.

1. He describes in particular the logistics and attendant difficulties involved in establishing the business’ short lived Kings Cross, Sydney restaurant in late 2016, (being after the Relevant Date, although still in principle relevant to exercise of the Registrar’s discretion under ss 101 and 102 of the Act). As he puts it:

   70. In late 2016, an opportunity arose in Kings Cross, and I successful [sic] negotiated and secured a [sic] acquisition of an existing pizza restaurant and assignment of the lease at 74 Darlinghurst rd. Kings Cross, Potts Point Sydney NSW, 2011. We rebranded the restaurant under the Pizza Express name and Trade Mark. The new Pizza  Express  Kings Cross opened in March 2017.

1. Farrell 1 was made on 5 May 2017, at which time the fledgling Kings Cross restaurant was less than two months old. As is apparent from the Removal Applicant’s evidence in answer summarized below, it was soon to close its doors.

1. Rebecca Currey is a solicitor with the Removal Applicant’s attorneys, Bird & Bird. Noting she had read Farrell 1 and Mr Farrell’s above-quoted reference to the Kings Cross restaurant, Ms Curreysays she visited the restaurant on 21 May 2017, finding:

   5.  …The store was closed (despite the “open sign” on the door) and did not look like it was operating or had recently been in operating [sic]. In this regard, I looked through the window and there looked to be works going on inside. There were no opening hours visible on the door of the premises. However, I note that the website at states that the Kings Cross store is open from 5 pm.

1. Ms Currey annexes photographs she had taken of the premises at 5.30 pm that day and a screenshot of the relevant webpage at <pizzaexpress.com.au> “showing the advertised opening  hours for  Pizza Express Kings Cross.”

1. She says she continued to visit the premises during the restaurant’s stated opening hours at various times since then, but “have never  seen  it  open for  business.” Finally, annexing photographs, she says that:

   9. When I attended the Pizza Express Kings Cross store at 4  pm  on 17 August 2017, I observed a “FOR LEASE” sign in the window.

1. I note that the photographs and website screenshot annexed to Currey show use of the Trade Mark as registered, that is including the Tagline, albeit the use in question is after the Relevant Period.

1. Liam McGuire is also a solicitor with the Removal Applicant’s attorneys and his declaration is based upon searches he undertook “to assess the accuracy of the statements made in [Farrell 1].” The searches included business name searches and land property title searches, essentially repeated for each of the Restaurants. Mr McGuire begins nevertheless by noting that the then recorded owners of the Registration were “Siobhan Farrell and Mark Farrell ATF The Siobhan & Mark Farrell Family Trust” (being the trust I defined earlier as “the SMF Family Trust”), unaware that Mr Farrell would later instruct Mr Mallon to record on the Trade Marks Register the changes made by the Variation Deed of 2 October 2013, which substituted the Opponent as sole trustee in place of the Farrells and changed the name of the SMF Family Trust to “the Mark Farrell Family Trust.” That said, Mr McGuire does annex the current (as of 13 June 2016) and historical records of the business he

located on the Australian Business Register through a search using the words “THE SIOBHAN   &   MARK   FARRELL   FAMILY   TRUST.”      As   Mr   McGuire

acknowledges, these records indicate that this was a former name and that the owner of the ABN in question since 2 October 2013 had indeed there been recorded as “The Trustee for THE MARK FARRELL FAMILY TRUST.”

1. Mr McGuire also seizes on Mr Farrell’s statement that he and his sister Siobhan were co-founders of the Pizza Express business in 1994 and that “the business at the time was a partnership of myself and Siobhan Farrell as trustees of our respective family trusts.” He “note[s] that [Farrell 1] does not provide any documentary  evidence relating to the establishment of this partnership, such as a partnership agreement.” I mention that this is of no relevance to my decision because, apart from being some 20 years before the Relevant Period in any event, I am not aware of any requirement that a written partnership agreement need exist in order for a partnership to be recognized by the law.10

2. For each of the Restaurants in turn Mr McGuire then discusses numerous business name searches, internet searches, property title and other searches he conducted in and around July 2017, pointing to alleged inconsistencies in some cases in how the names of the Farrells and/or of the SMF Family Trust appear in the various different contexts highlighted. Although Mr McGuire was unaware of it at the time, the Variation Deed and the somewhat desultory manner in which eventual recordal of the changes the Deed made were eventually recorded in the databases he was searching, effectively account for the discrepancies he identified.

1. Mr McGuire’s further concern is that Farrell 1 does not  provide  sufficient documentary evidence supporting the Opponent’s claimed use of the Trade Mark in the Relevant Period, suggesting that the Opponent ought to have provided, inter alia, copies of “purchase of business” agreements or lease agreements for the Restaurants. These and other matters are addressed in the Opponent’s evidence in reply, consisting of Farrell 2 and its Annexures MBF-8 to MBF-24.

10 Section 2 of the Partnership Act 1892 (NSW), for example, states, inter alia, that, “The receipt by a person of a share of the profits of a business is prima facie evidence that the person is a partner in the business.”

1. In particular, annexed to Farrell 2 are copies of both the original Trust Deed dated 12 May 2000 establishing the SMF Family Trust (with the Farrells as joint trustees) and of the Variation Deed of 2 October 2013 substituting the Opponent as the sole trustee and renaming the trust itself to “the Mark Farrell Family Trust.” Mr Farrell reiterates that:

   10.   Since 2 October 2013, MBF Finances Pty Ltd, as trustee for the Mark Farrell Family Trust, has owned the Trade Mark.

   11.   Since 2 October 2013, the trustee of the Mark Farrell family trust has been MBF Finances Pty Ltd.

   12.   Since 2 October 2013, the Pizza Express business has been owned and operated by MBF Finances Pty Ltd, as trustee for the Mark Farrell Family Trust.

   13.   I am the sole shareholder and director of the [sic] MBF Finances Pty Ltd, and MBF Finances Pty Ltd’s sole function is to act as the corporate trustee of the Mark Farrell family trust.

   14.   On 18 September 2017, MBF Finances Pty Ltd as trusted [sic] of the Mark Farrell Family Trust was registered with the Trade Mark Office as the owner of the Trade Mark. Annexed and marked “MBF-10” is a true copy of the Trade Mark Offices [sic] Notice of Assignment  of Registration  to  Subsequent  Owner  for  Trade  Mark   1128502   dated 18 September 2017.

   15.   In [Farrell 1], I refer to myself and to Siobhan and myself, interchangeably at times operating the Pizza Express business.  The correct position is that at all times I am referring [sic] the trustee of the Mark Farrell Family Trust (formerly the Mark & Siobhan Farrell Family Trust). Where I refer to myself as running the Pizza Express [sic] since 2 October 2013, I should have referred to myself as running the business through by [sic] corporate trustee, MBF Finances Pty Ltd as the trustee of the Mark Farrell Family Trust.

1. Also annexed to Farrell 2 are copies of leases for the Restaurants’  premises  in Western Australia at Riverton, Scarborough, Cockburn, Duncraig, Como,  Mosman Park, Morley and Baldivis (which eventually opened in April 2017). As Mr Farrell observes, most of these span the Relevant Period and all but two have the Opponent ATF the SMF Family Trust recorded as the lessee. The two exceptions, Riverton and Mosman Park, both involve leases dating from 2009 and have the former trustees of the SMF Family Trust, namely the Farrells, still recorded as lessees. In this regard Mr Farrell says:

20. Where the lessee is referred to as Mark Farrell and Siobhan Farrell as the trustees of the Mark & Siobhan Farrell Family Trust, it is the case that the landlord and MBF Finances Pty Ltd as the trustee of the Mark Farrell Family Trust are yet to vary the lease to reflect the appointment of MBF Finances Pty Ltd as the new trustee on 2 October 2013.

1. Finally, Mr Farrell provides various documentation relating to the failed Kings Cross, Sydney restaurant, albeit, as noted, this venture was undertaken in 2017, being after the Relevant Period. In particular, annexed to Farrell 2 are copies of airline tickets to fly two experienced staff from Perth to Sydney to set up and run the restaurant, a lease for accommodation rented for these staff in Sydney, an agreement with Zwift for the restaurant to be promoted on line via EatNow, Menulog and other websites and registration of the restaurant with the Sydney authorities as food premises. After providing further details of the restaurant’s set up, Mr Farrell concludes by saying:

   43.  As a result of the Kings Cross restaurant not performing to expectation, I decided to take remedial action to protect my financial position. I had to take [sic] to manage losses and restructure the venture. The action I took was to:

   (a)  Close the restaurant when it became apparent that the location was not viable.

   (b)  To relocated [sic] back to Perth the experienced staff I had sent over in February 2017, until such time as another suitable location could be found.

   (c)  To relocated [sic] back to Baldivis, WA, all our heavy commercial kitchen equipment at the King Cross restaurant, so it could be used in the new Baldivis restaurant. A company called Computer Trans was engaged to collect and deliver all our heavy commercial kitchen equipment to our then new Baldivis store. My intention is to purchase replacement kitchen equipment  again locally in Sydney at a time that replacement location is found. Annexed and marked “MBF-24” is a true copy of email correspondence with Computer Trans dated 23 May 2017 arranging for the collection and transportation of the heavy commercial kitchen equipment from Kings Cross to our then new Baldivis store.

   [44.] The Pizza Express business continues to pay the rent at its location in 72-80 Darlinghurst Road, POTTS POINT NSW 2011 until such time as I am able to find a suitable and viable location in Sydney.

1. I turn now to a discussion of the parties’ representatives’ submissions.

Discussion Section 92(4)(b)

Use by the Registered Owner

1. Before discussing the actual use of the Trade Mark claimed it is necessary firstly to deal with Ms Owen’s submission that any apparently relevant use I did find was not on the evidence use by the “registered owner” in any event. Nor, she submitted, could s 100(3)(b) save the Opponent because the terms of any assignment of the Registration to the Opponent were unknown to me and I could not therefore be satisfied that any subsequent use accorded with them.

1. The Opponent’s position, as Ms Rubagotti, relying on the Variation Deed, put it, is:11

17.   Throughout the Revenant [sic] Period, the owner of the Trade Mark has been The Trustee of the Mark Farrell Family Trust (formally known as The Siobhan & Mark Farrell Family Trust) (“the Trust”).

18.   During the Revenant [sic] Period:

18.1   from 5 July [2013] to 2 October 2013, the trustees of the Trust were Mark Farrell and his sister Siobhan Farrell; and

18.2    from 2 October 2013 to 5 July 2016, the trustee of the Trust was MBF Finances Pty Ltd, a company owned and controlled by Mark Farrell.

19.   Due to an oversight, the replacement of the trustee of the Trust was not reflected in a recordal of assignment of registration of the Trade Mark until after the Relevant Period, on 18 September 2017. On 31 January 2018, the name of the Opponent in this opposition was changed to MBF Finances Pty Ltd as the trustee of the Mark Farrell Family Trust.

1. Referring to this submission (using the shorthand “OOS”), Ms Owen countered that:

17.  It is asserted in Farrell 2 [10] that [the Opponent] is and has been the owner of the Trade Mark since 2 October 2013 on the basis of clause 1.4 of the [Variation] Deed. At OOS [19] [the Opponent] asserts that the failure to record the change in ownership of the Trade Mark to being [the Opponent] as trustee of the Trust was an “oversight” (OOS [19]).

18.   Relevantly, clause 1.4 of the [Variation] Deed says:

The Retiring Trustees must give notice in writing to each person or entity owing money to the Retiring Trustees as trustee of the Trust and do all such things as may be necessary for the assignment to the New Trustee of any debt or chose in action. The Retiring Trustees must do all things necessary and sign all documents necessary to perfect the New Trustee’s title to all assets of the Trust.

11 I have omitted Ms Rubagotti’s footnotes.

19.  On any plain reading of clause 1.4 of the Deed, the clause does not assign the rights in the Trade Mark to [the Opponent]. Clearly, it requires the Retiring Trustees (Siobhan Farrell and Mark Bernard Farrell) to “do all such things as may be necessary for the assignment to the New Trustee of any...chose in action”. [The Opponent] has not produced that assignment documentation, nor asserted that there is any other relevant documentation.

1. I firstly note that, contrary to this submission, Mr Farrell does not in Farrell 2 ever refer to any specific clause of the Variation Deed, merely saying at [10] that “Since 2 October 2013, MBF Finances Pty Ltd, as trustee for the Mark Farrell Family Trust, has owned the Trade Mark.” That said, I do not agree that clause 1.4 of the Variation Deed is relevant to assignment of the Registration from the Farrells to the Opponent in any event or that any further assignment document beyond the original Trust Deed and the Variation Deed themselves was required to effect the Registration’s change in ownership. Rather, as I understand the combined import of the original Trust Deed (Annexure MBF-8) and Variation Deed (Annexure MBF-9), the Variation Deed itself effected “transmission” of the Registration, (which at all times was and remained owned by the trustee(s) of the SMF Family Trust), by formally substituting the Opponent as sole trustee in place of the Farrells. In this regard transmission of a registration, like assignment of a registration, is provided for by s 106 of the Act, with “transmission” itself defined in s 6 as follows:12

   “transmission” means:

   (a)transmission by operation of law; or

   (b)devolution on the personal representative of a deceased person; or

   (c)any other kind of transfer except assignment.

1. The position here, as I see it, is not greatly dissimilar from a case where ownership of a trade mark registration is transmitted by will to an executor, or where, say, one of two joint executors of a will resigns.13 Once probate is granted no separate assignment document is required to effect the change in ownership of a trade mark registration.  In the present case clause 24 of the original Trust Deed relevantly states:

24. RESIGNATION OF TRUSTEES GUARDIAN OR APPOINTOR

12 In contrast, “assignment” is defined in s 6 as meaning “assignment byact of the parties concerned.”

13  See my discussion of transmission in these circumstances in The Executor of the Estate of Peter Geoffrey Brock (deceased) [2008] ATMO 69.

Notwithstanding anything contained in this Deed:

(a) any Trustee, Guardian, or Appointer and any person who may by succession become a Trustee, Guardian, or Appointor (“the Retiring Person”) may resign or renounce such position by notice in writing to the Trustees and forthwith upon the giving of such notice the Retiring Person shall for all purposes hereunder cease to be a Trustee, Guardian, or Appointor or to be a person who may by succession become a Trustee, Guardian, or Appointor (as the case may be)…

1. For its part the Variation Deed relevantly states in its Recitals and Operative Part:

BACKGROUND

…

E.  Pursuant to Clause 24 of the Trust Deed, a Trustee may at any time resign from the office of trustee by written notice to the Trustee and forthwith upon the giving of such notice the person given the same shall for all purposes cease to be a trustee.

F.  The Retiring Trustees [the Farrells] have given the required notice to the Trustee of their desire to retire as trustee of the Trust.

G.  By clause 22 of the Trust Deed, the power to appoint a new trustee in place of the Retiring Trustees vests with the Appointer [the Farrells].

H.  The Appointer desires to replace the Retiring Trustees with the New Trustee [MBF Finances Pty Ltd] as trustee of the Trust.

…

K.   The New Trustee has accepted the appointment to replace the Retiring Trustees.

…

OPERATIVE PART:

1.  RETIREMENT OF TRUSTEE

1.1  Retiring trustee

The Retiring Trustees hereby retire as trustee of the Trust with such retirement to be effective from [2 October 2013].

1.2  Acceptance of Retirement

As Trustee of the Trust, the New Trustee ratifies and confirms that such retirement is to be effective from [2 October 2013].

1.3  Discharge of Retiring Trustees

On and from the date of this deed [2 October 2013], the Retiring Trustees are discharged from further performance of its obligations and duties as Trustee of the Trust.

1. The original Trust Deed and the Variation Deed are then, in my estimation, the sole documentation needed to effect transmission of the Registration to the Opponent.

1. I must for the same reason also reject Ms Owen’s submission that the Opponent may not rely on s 101(3)(b) of the Act, which permits the Registrar to treat use in good faith by an unrecorded assignee as having been use by the registered owner where she is satisfied it is “reasonable” in the circumstances to do so and the use was in accordance with the terms of the assignment. I am so satisfied on the evidence before me and proceed accordingly. I would only add that the Relevant Period includes the period 6 July 2013 to 2 October 2013, when the Farrells were still both trustees of the SMF Family Trust and, as the evidence shows, then carrying on the Pizza Express business together in any event.

1. That said, the Removal Applicant’s alternative submission, as it were, to which I now turn, was that:

   30. To the extent that the Delegate is of the view that the Trade Mark has been assigned to [the Opponent], and that use by the assignee during the Relevant Period is sufficient to rebut the allegation, the evidence does not establish use, or if accepted, such evidence shows de minimis use at best.

Actual Use

1. Ms Owen was critical of the Opponent’s evidence of use of the Trade mark on a number of fronts, principally that:

   (i)  ) the claimed use is not sufficiently documented;

   (ii)        when Mr Farrell describes  various  actions  he undertook  “there is no evidence as to on whose behalf and under what authority or  in what capacity” he acted;

   (iii)  “while some of the [leases and purchase of business agreements attached to Farrell 2] refer to the business ‘PIZZA EXPRESS’, this is not evidence of use of the Trade Mark at these locations during the Relevant Period or otherwise, nor are they evidence of use of the Trade Mark with additions or alterations not substantially affecting its identity; and

   (iv)   “a general statement as to the conduct of a Pizza Express restaurant does not suffice [to describe] the scope of services supplied.”

1. On this last point I understood Ms Owen to concede at the hearing that the operation of a pizza restaurant  providing take away and eat  in facilities as described by Mr

Farrell  in his evidence  would  on the  face of  it be use  in relation to  (all of)  the Registered Services.  I confirm this is my view.

1. As to whether what use is shown is use of the Trade Mark as registered, I think the better view is that it is. The words of the Tagline, “Fast, fresh and flamebaked,” are on their face descriptive in the context of the Registered Services and I do not think their absence substantially affects the identity of the Trade Mark as a whole.

1. If I be wrong in that regard I am in any event satisfied on balance from the evidence as a whole that the mark was used with the Tagline in the normal course in the pizza restaurant business. Mr Farrell says as much consistently throughout Farrell 1 and I accept what he says. I note too that stationery reproduced in Annexure MBF-1 to Farrell 1, albeit undated, bears the Trade Mark as registered. Moreover, while taken after the Relevant Period I note too that the photographs of the Kings Cross restaurant annexed to Currey show use of the Trade Mark as registered on those premises. It is unlikely in my view that this particular restaurant would use the Trade Mark as registered but that the restaurants in Western Australia, for some reason, would not.

1. As to Ms Owen’s criticism that it was unclear in what capacity Mr Farrell was acting at any particular time, I do not think this of significant concern in this case.  As Mr Farrell has explained, he has used the Trade Mark continuously since 1994  in the operation of the Restaurants in various capacities, firstly in partnership with his sister, then from 2000 to  2 October 2013 as co-trustee with his sister of the SMF Family Trust and, since then, as the sole Director and shareholder of the Opponent, MBF Finances Pty Ltd as trustee for that same trust. I do not think Mr Farrell necessarily commenced each day, with his lawyer by his side, and contemplated in precisely what legal capacity he would act that day.  I do however think that what the Full Federal Court said in Food Channel Network Pty Ltd v Television Food Network GP,14 (albeit in the context of ss 58 and 59 of the Act), should guide me here, the Court indicating one should not rush to reflect adversely on the actions of a claimed user in circumstances where there may be no formal arrangements in place between an individualand a company controlled by that individual.

14 (2010) 86 IPR 437 at [61].

1. Finally, I do not agree with Ms Owen that the use claimed by Mr Farrell is not sufficiently documented. To the contrary, I find that the documentation in  the evidence before me, taken as a whole, is clearly sufficient for me to conclude on balance that the registered owner, and/or the registered owner’s unrecorded assignee, used the Trade Mark in good faith in relation to its pizza restaurants in Western Australia during the Relevant Period.  I do so conclude.

1. That being the case I will turn presently to the Removal Applicant’s alternate position, namely that:

   60. To the extent that the Registrar is positively satisfied that the trade mark should not be removed from the Registrar in full, the Applicant relies on section 102 as the basis for the Registrar imposing a geographic limitation to:

   60.1.1the Perth metropolitan area on the Trade Mark; or

   60.1.2Western Australia.

Obstacles to Use

1. Before doing so, however, and although it is not necessary to decide this issue here, I will briefly comment for the sake of completeness on s 100(3)(c) of the Act. In this regard I agree with Ms Owen that the reasons put forward by Mr Farrell concerning the difficulties in expanding the business beyond Western Australia would most likely not constitute circumstances that were “an obstacle” to use of the Trade Mark as that term is contemplated bythe section.

Limitation under s 102

1. In her written submissions Ms Owen argued that:

61. …section 102(1) is triggered on the basis that:

61.1.1 the removal application was made pursuant to section 92(4)(b);

61.1.2   the applicant’s trade mark application no. 1748426 “PIZZA EXPRESS” (device) (Applicant’s Application)  is  deceptively similar to the Trade Mark;

61.1.3  the Applicant’s Application is in relation to the services the subject of the removal application;

61.1.4   the Applicant’s mark is capable of having a condition or limitation  placed  upon  it  that  would  be  complementary to  any

condition or limitation that the Delegate might place upon the Trade Mark; and

61.1.5the Applicant’s Application “may be properly registered”.

1. I understand there is very little, if any, authority on the application of s 102 other than the relatively recent decision of the Registrar’s delegate in Franklins Pty Ltd v No Frills Pty Ltd15 (“Franklins”), on which Ms Owen relied exclusively. While the case is instructive as far as the application of s 102 generally is concerned, it nonetheless merely confirms what any sensible reader of s 102 must conclude, namely that the section is intended, as Shanahan puts it, to “enable an honest concurrent user to compel a territorial restriction of the earlier conflicting registration through proceedings for non-use.”16   As the Hearing Officer in Franklins explains at [34]:

   …there is apparently little to no case law to assist in the interpretation of s 102: especially in relation to s 102(1)(b). The Explanatory Memorandum to the Trade Marks Bill 1995 (“the EM”), however, provides some guidance. Paragraph 83 of the EM reads:

   The court or the Registrar may also apply conditions or limitations to the registration of a trade mark. Clause 102 provides for circumstances where both the applicant for removal of the trade mark and the opponent have established use of the trade mark in different locations, and the applicant’s trade mark is, or will be, subject to a condition or limitation relating to a specified place or market. Under these circumstances, if non-use of the trade mark which is the subject of the removal action has been established for the relevant goods or services  in  that specified place or market, the court or the Registrar may apply conditions or limitations to the registration so that the specified areas or markets covered by the applicant’s registration and the registration the subject of the removal action will be mutually exclusive.

   [My emphasis]

1. In the present matter I accept that the Removal Applicant is the applicant for currently deferred trade mark application 1748426 in Classes 30, 39 and 43, filed in 2016, for the following mark:

15 [2014] ATMO 55, particularlyat [32]-[47].

16 Shanahan’s Australian Law of Trade Marks and Passing Off 4th edn; Lawbook Co. at [45.1505]. I note the authors’ use of the word “compel” perhaps overstates the position somewhat as invoking s 102 is entirelyat the Registrar’s discretion.

1. I accept, too, that application 1748426 covers services similar to the Registered Services and that the party’s respective marks could reasonably be said to be deceptively similar. Indeed, I understand that the Registration has been cited against application 1748426 and that is the reason for the application’s deferment. However, there is no evidence before me that the Removal Applicant has ever used its mark for any goods or services anywhere in Australia, or of any other circumstances, which might support a case for registration of the Removal Applicant’s mark under ss 44(3) or (4) whilst the Registration remains as it is. The requirements of s 102(1) are not accordingly met in my view, since I am not “of the opinion that [the Removal Applicant’s mark] may properly be registered in the name of the [Removal Applicant] with [any particular] condition or limitation.”

1. As recognized in Ms Owen’s written submissions, the application of s 102 is in any event discretionary:

   63. Further, the Applicant submits that a geographic limitation to the Perth metropolitan area, or in the alternative, the State of Western Australia, is an appropriate exercise of the discretion of the Registrar under s 102(2) in weighing up the interests of the public and the integrity of the Register and the owner of the Trade Mark in circumstances (see Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; (2009) AIPC 92-354) [sic].

   64. In this regard, “the avoidance of deception or confusion amongst consumers as to the trade source of goods and services is a principal aim of the Act. In considering whether the discretion available to the Registrar pursuant to s 102(2) should be exercised the likelihood of deception or confusion should, therefore, be a central consideration, although the private commercial interests of both parties are matters which can be taken into account”: [Franklins] at [60] referring to E&J Gallo Winery v Lion Nathan Australia (2010) 241 CLR 144 at [209]-[210].

2. In the present matter there is no evidence before me suggesting that  the  public interest, or the interest of the owner of the Trade Mark, or the “integrity of the Register” would best be served by allowing the parties’ apparently deceptively similar

trade marks to coexist, albeit in different States, for essentially identical services in circumstances where, as far as I am aware, the Removal Applicant has not yet used its mark in Australia.

1. To conclude, s 102 is not in my view triggered at all in the present case. Even if it were, I would not on the evidence before me exercise the Registrar’s discretion to apply the section as the Removal Applicant requests.

The Registrar’s Discretion under s 101

1. I have found that the Opponent has successfully rebutted the Removal Applicant’s allegation of non-use and further that it would not be appropriate to apply s 102 in this case as requested by the Removal Applicant. Although both Ms Rubagotti and Ms Owen addressed the issue of the Registrar’s discretion under s 101(3), given those findings it is not necessary to discuss possible application of the section in the Opponent’s favour.

Decision

1. I am satisfied that the Opponent and its predecessor in title, the Farrells, used the Trade Mark in good faith in Western Australia during the Relevant Period for the Registered Services. However I do not believe this is an appropriate case to invoke s 102(2) of the Act to limit the scope of the Registration to Western Australia only. Registration 1128502 may accordingly remain on the Register unamended.

Costs

1. In the event of success Ms Rubagotti sought an award of costs in the Opponent’s favour. I believe this to be appropriate in this case and award costs against the Removal Applicant as specified in Schedule 8 to the Trade Marks Regulations 1995.

Michael Kirov Hearing Officer

Oppositions and Hearings 28 September 2018