Melissa Maree Spilsted v Marie Mongan - [2019] ATMO 121

TRADE MARKS ACT 1995

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

Re:Opposition by Melissa Maree Spilsted to an application under section 92 of the Trade Marks Act 1995 (Cth) by Marie Mongan to remove trade mark number 1561896 (41 and 44) – HYPNOBIRTHING AUSTRALIA and DEVICE - in the name of Melissa Maree Spilsted.

Delegate:

M. Cooper

Representation:

Opponent: IP Wealth Pty Ltd

Applicant: One IP International Pty Ltd

Decision:

[2019] ATMO 121

Trade Marks Act 1995 (Cth) – s 96 opposition: application under s 92(4)(a) to remove trade mark from Register – use demonstrated - s 92(4)(a) grounds not established. Trade Mark to remain on Register.

Background

This matter concerns the opposition by Melissa Maree Spilsted (“the Opponent”) to an application under s.92(4)(a) of the Trade Marks Act 1995 (“the Act”) by Marie Mongan (“the Removal Applicant”), to remove the trade mark no. 1561896 from the Register for non-use.
This application for removal was made on 27 February 2017. It was made in relation to all the Services for which the Trade Mark is registered.
On 10 June 2013, the Opponent applied to register the trade mark below (allocated trade

mark no. 1561896):

(“the Trade Mark”)

The services for which the Trade Mark is registered are as follows:

Class 41:

Childbirth education and training; Adult training; Advisory services relating to training; Arranging and conducting of workshops (training); Arranging of exhibitions for training purposes; Association services being the provision of training and education to members of the association; Coaching (training); Conducting training seminars; Conducting workshops (training); Consultancy services relating to training; Mentoring (education and training); Organisation of training courses; Practical training (demonstration); Providing courses of training; Provision of information relating to training; Provision of training; Provision of training courses; Provision of training facilities; Setting of training standards; Staff training services; Teacher training services; Technical training; Computer based training; Life coaching services (training or education services); Mentoring (training); Training; Training consultancy; Electronic publication of information on a wide range of topics, including online and over a global computer network; Providing online electronic publications (not downloadable); Provision of education courses; Provision of education services via an online forum; Provision of educational courses; Provision of educational examinations; Provision of educational information; Adult education; Adult education services; Conducting of educational conferences; Conducting of educational courses; Conducting of exhibitions for educational purposes; Consultancy services relating to education; Design of educational courses, examinations and qualifications; Arranging of exhibitions for educational purposes; Business educational services; Educational consultancy services; Educational instruction; Educational research; Educational seminars; Educational services; Event management services (organisation of educational, entertainment, sporting or cultural events); Management of educational events; Organisation of exhibitions for cultural or educational purposes; Providing facilities for educational purposes; Publication of educational materials; Publication of educational texts; Setting of educational standards; Education services; Management of education services; Health education; Distribution (other than transportation) of videos; Production of audio and/or video recordings, other than advertising; Production of audio…

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: [2019] ATMO 121
Decision Date: 12 August 2019

CaseChat Overview and Summary

This matter concerned an opposition to the removal of a trade mark, brought by Melissa Maree Spilsted (the Opponent) against Marie Mongan (the Removal Applicant). The decision was made by a delegate of the Registrar at IP Australia.

The primary legal issue before the delegate was whether to admit the Removal Applicant's evidence in answer, which had been filed out of time and in a form that did not initially comply with the requirements of the Trade Marks Regulations 1995. The delegate also had to consider the substantive opposition to the removal of the trade mark, in circumstances where the Opponent had filed evidence and written submissions, but the Removal Applicant had not filed any evidence in answer or written submissions in response to the Opponent's evidence.

The delegate reasoned that the Removal Applicant had failed to comply with the Regulations regarding the filing of evidence. Despite opportunities and extensions being offered, the Removal Applicant did not properly file its evidence in answer within the prescribed timeframes. The delegate noted that the initial filing was not in the form of a statutory declaration, and subsequent attempts to rectify this were also out of time and ultimately refused. Consequently, the delegate determined that the Removal Applicant's evidence in answer could not be admitted. As the Removal Applicant had not filed any evidence in answer or submissions addressing the Opponent's evidence, the delegate proceeded to decide the substantive matter based on the evidence before them.

The delegate found that the Opponent had established grounds for the removal of the trade mark. The Removal Applicant's opposition was therefore dismissed, and the trade mark was removed from the Register.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

The evidence filed in relation to this removal opposition comprises:· Evidence in Support Ø Declaration of Melissa Maree Spilsted, the Opponent’s director, dated 25 October 2017, with exhibits MS-1 to MS-24 (“the Spilsted declaration”). There is no Evidence in Answer. This is discussed further below. On 25 June 2018 IP Australia wrote to the Opponent and the Removal Applicant noting that neither party had requested a hearing and advising that the substantive matter would be delegated to an officer to decide. They were also advised that any written submissions they wished to make should be lodged one month from the date of the correspondence. On 25 July 2018 the Opponent filed written submissions. No submissions were received from the Removal Applicant. On 28 June 2019 the matter was allocated to me as a delegate of the Registrar to decide. On 31 January 2018 the Removal Applicant filed a collection of material, presumably its Evidence in Answer. This material was not in the form of a statutory declaration with annexures as required by reg 21.6 of the Trade Marks Regulations 1995 (“the Regulations”). On 19 February 2018 IP Australia wrote to the Removal Applicant advising it would accept the material if the Removal Applicant filed the material again with a declaration stating “see attached”. On 21 February 2018 the Removal Applicant filed a statutory declaration of Anthea Thomas and associated annexures. On 28 February 2018 IP Australia wrote to the Removal Applicant observing that it had not filed a declaration in the form requested and therefore the evidence stages were at an end. The same correspondence noted the new material filed on 21 February 2018 was out of time and, among other things, invited the Removal Applicant to provide submissions in this regard. On 9 March 2018 the Removal Applicant’s new representatives wrote to IP Australia explaining the delay in filing the material and submitting that there was a compelling case for its admission. On 13 March 2018 the Removal Applicant’s representatives resubmitted this correspondence with an application for an Extension of Time until 2 April 2018 to file Evidence in Answer. A further (different) statutory declaration of Anthea Thomas and annexures were also filed at this time. On 28 March 2018 IP Australia wrote to the Removal Applicant advising its intention to refuse the extension of time and providing reasons. The Removal Applicant was given 14 days to provide either a declaration with further reasons in support of the Extension of Time or to request a hearing in relation to it. It then advised that “[i]f you do neither, within the time allowed, the extension of time may be refused without further notice.” A copy was sent to the Opponent. On 24 April 2018 IP Australia wrote to the Removal Applicant noting that no further information had been provided and the Extension of Time had been refused. “If you intend to file submissions putting forward a case for the statutory declaration of Anthea Thomas dated 24 January 2018 and annexures to be considered at the time the substantive matter is determined, please upload those submissions to the folder … [in] Objective Connect as soon as possible.”