Medallion Group Pty Ltd v Medallion Homes Pty Ltd

[2024] ATMO 18

TRADE MARKS ACT 1995

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

Re:Opposition by Medallion Group Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by Medallion Homes Pty Ltd for removal of trade mark number 1363504 (37, 40, 43) - MEDALLION HAND CAR WASH (Figurative) – in the name of Medallion Group Pty Ltd

Delegate:

Nicholas Smith

Representation:

Opponent: Baybridge Lawyers Pty Ltd

Applicant: Lynch Meyer

Decision:

2024 ATMO 18

Trade Marks Act 1995 (Cth) - section 96 opposition: ss 92(4)(a) and (b) application for removal - Opponent’s evidence shows use of the Trade Mark during the relevant period for a subset of the services for which it was registered - no obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register for some of the services for which it is registered

Background

1. This decision is pursuant to an application made on 6 November 2020 under ss 92(4)(a) and (b) of the Trade Marks Act 1995 (Cth) (‘Act’) by Medallion Homes Pty Ltd (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of the services in classes 37 and 40 set out below (‘Removal Services’) for which the trade mark is registered, that is, the application is for partial removal of the trade mark.

Registration No.

1363504

Lodgement date

26 May 2010

Services

Class 37: Supervision of construction projects

Class 40: Treatment of materials

Class 43: Cafeteria Services

(‘Registered Services’)

Owner

Medallion Group Pty Ltd

Trade Mark

(‘Trade Mark’)

2. 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.

3.  Medallion Group Pty Ltd (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 14 January 2021 and a Statement of Grounds and Particulars (‘SGP’) on 25 May 2021.  The Applicant filed a Notice of Intention to Defend on 20 July 2021.

1. The  following evidence was filed in this matter:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Rohit Saini, director of the Opponent (‘Saini declaration’)	21 October 2021	RS-1 to RS-16

1. The entirety of the evidence filed by the Opponent, including publicly available information such as the public use of the Trade Mark and the contents of national trade mark registries, is claimed to be confidential.  I adopt the approach of the delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim stated:

   The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

   This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[1]

   [1] [2008] ATMO 17, [5]-[6] (Hearing Officer Thompson).

2. I note that, if a party considers a piece of information to be commercially sensitive it must identify that information with specificity.  If in my summary of the evidence, I have disclosed information that is sensitive, then this is an issue that has arisen by that party not specifically identifying that information as sensitive.

   7.  Once the time allowed for filing evidence had ended, the parties were given an opportunity to request an oral hearing or a hearing by written submissions.  On 10 October 2022 the Applicant requested a hearing by submissions and paid the appropriate fee.  The matter was set down for a hearing on 1 December 2023.  In line with usual practice, a letter was sent to the parties on 5 October 2023 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Applicant filed written submissions on 24 November 2023 (‘Applicant’s Submissions’).  The Opponent did not file any submissions.

   8.  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 Notice of Intention to Oppose and SGP;

   ·The Applicant’s Submissions. 

   The Relevant Provisions

   9. 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;

   (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.

   10. 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 6 October 2020 (‘relevant period’).

   11. 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 application,[2] and I confirm that five years since filing the application have 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 (Cth) 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.

   12.     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
   (c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before 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.

   […]

   (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 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
    (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

   (i)  the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
   (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

   (c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

   13.     I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[3]

   [3] 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.

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

   15. I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[4] 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’.[5] Use of the Trade Mark by an authorised user (as defined by s 8) is taken to be use of the Trade Mark by the Opponent.[6] 

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

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

   [6] Act s 7(3).

   16.     The principles 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.[7]

   [7] 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).

   Discussion

3. Sections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal. Because of the specifics of these provisions paragraph (a) is considered to effectively merge with paragraph (b) once a trade mark has been registered for five[8] years.[9] As the Trade Mark had been registered for more than five years as at the date of the application I need only consider the application for removal under s 92(4)(b) in this case. Therefore, to successfully oppose the application the Opponent must establish that it has used the Trade Mark (or a substantially identical trade mark[10]) pursuant to s 100 (either through use or that there were circumstances that were an obstacle to use in the relevant period (per s 100(3)(c)). 

   [8] Or three years for trade marks filed from 24 February 2019 onwards see changes made in the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1, pt 3.

   [9] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off 6th edition, 2016 Thomson Reuters, [70.510].

   [10] Act s 100(3)(a) and discussed in AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).

4. If the Opponent fails to establish such use or an obstacle to use, I have discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register.

   Use of the Trade Mark in the relevant period

5. The Opponent’s evidence in this matter consists of the Saini declaration.  The Saini declaration gives detailed evidence that the Opponent has, continuously since 2010, provided hand car wash services under the Trade Mark.   

6. There is a fundamental issue with the Opponent’s evidence of use of the Trade Mark for the Class 40 services (treatment of materials) and in some aspects the Class 37 services (although there is other evidence of use discussed in the next paragraph).  The Opponent’s car wash services involve the preparation and use of chemicals for treating the materials comprising the exterior and interior of vehicles.  The Opponent also granted rights to four franchises to operate car wash businesses under the Trade Mark which supposedly involved supervising the construction of the franchises.  Mr Saini asserts that this use amounts to use for the Removal Services.  This is not correct.  A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. The use of a trade mark for a good or service that is merely ancillary to or an input into the service offered under a trade mark is not use of that mark for the good or service as it is not a good or service offered to an end consumer.[11] The fact that the Opponent franchises its own business or in the course of providing car wash services uses chemicals to treat (for example) interior leather does not mean that it uses the Trade Mark for those services, rather they are either an input into the car wash services, the same way that labour is an input, or ancillary, such as marketing of their services.  To put it another way, the Opponent does not provide services relating to treatment of materials to customers, it provides car wash services under the mark and those services contain, as an input or ancillary service, the treatment of materials.  Equally the fact that an entity franchises its own business does not mean that it uses its mark for franchising services; this is not a service provided in the course of trade.

   [11] Watermark Restaurant Pty Ltd v The Watermark Hotel Group Pty Ltd (2002) 55 IPR 406, 415 (Hearing Officer Ryan).

7. At paragraph 19 of the Saini Declaration the Opponent refers to and exhibits an executed project management agreement between it and a third party franchisee dated 1 August 2019 (‘Aldy Agreement’).   The Aldy Agreement is titled ‘Project Management Agreement’ (or ‘Project Management and Supervisory Agreement’), displays the Trade Mark and states, in the recitals, that ‘[Opponent] is a Company that provides project management and supervision services in the building industry and [the third party] desires to engage [the Opponent] to project manage and supervise the construction of the said townhouses in conjunction with the builder’.   This document sets out various obligations of the Opponent, which appear on their face to correspond with project management and supervision services, including, in essence, reviewing the work of the builder to ensure they complete the work in a proper manner.  At Exhibit RS-9 is a tax invoice issued by the Opponent for project management services provided pursuant to the Aldy Agreement, dated after the relevant period (but I note that the signed contract is well within the relevant period suggesting that any services provided under the Aldy Agreement would have occurred during the relevant period).

8. The Applicant submits that the Aldy Agreement, notwithstanding that it shows the Opponent providing services that on its face include supervising construction, is not use of the Trade Mark for supervision of construction projects because the Opponent is not a licensed building practitioner and hence is not licensed under Victorian law to carry on building work.  I do not accept this submission as the Applicant has failed to show me why ‘supervision of construction projects’; being a service similar to project management (as opposed to providing actual construction services), requires the holding of a building licence under law.  I note that the Aldy Agreement specifically refers to a third party builder, who, one presumes, would be the entity holding the licence.  Nor do I accept the Applicant’s Submissions that because the work conducted under the Aldy Agreement was domestic building work; the Opponent was required to hold a building license:  The Opponent was not providing building services (the Aldy Agreement referred to the existence of the builder); rather the Class 37 services fall within the broader category of project management services and the Applicant’s Submissions do not explain why such services require a licence.

1. Finally, the Applicant argues that the services described in the Aldy Agreement, being services that involve supervising construction, are not really ‘supervision of construction services’ because the Opponent is not doing anything more than ‘looking over the shoulder of a licensed building practitioner’.  I do not accept this submission.  The Opponent has, during the relevant period and under the Trade Mark, entered into a contract with a third party, on its face in good faith (and subsequently was paid for these services), for services including the supervision of construction.  This amounts to use of the Trade Mark for the class 37 services.

2. Accordingly, I am satisfied that the Opponent has used the Trade Mark in Australia in respect of ‘supervision of construction projects’ (‘Used Services’) in the relevant period.  I am not satisfied that the Opponent has used the Trade Mark for ‘treatment of materials’ (‘Remaining Services’) during the relevant period. 

   Obstacles to use

   25.     The Opponent does not formally submit that there have been any matters that amount to an obstacle to the use of the Trade Mark for the Remaining Services in the relevant period, pursuant to s 100(3)(c) and in the interests of completeness I note that I have been unable to identify any such obstacles.  As there is no obstacle to use of the Trade Mark, it is therefore necessary to consider whether I should exercise the discretion to allow the Trade Mark to remain on the Register for any of the Remaining Services.

   Registrar’s Discretion

   26.     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 Mark in respect of the Remaining Services.[12] The burden of persuasion in this regard falls on the Opponent.[13]

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

   [13] Ibid.

   27.     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 Mark in respect of any of the Remaining Services.

   Decision

   28.     The Opponent has partly established its opposition to the removal application. Accordingly, I direct that registration 1363504 be removed from the Register in respect of the Remaining Services one month from the date of the Decision. It will remain registered for the services listed below. 

   Class 37: Supervision of construction projects

   Class 43: Cafeteria Services

   29.     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 registration be dealt with as the Court sees fit.

   Costs

   30.     Neither party has been entirely successful in respect of the application for removal of Trade Mark.  As such I make no order as to costs.

   Nicholas Smith

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   1 February 2024