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

1. 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.

2. 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.

3. On 10 June 2013, the Opponent applied to register the trade mark below (allocated trade

mark no. 1561896):

(“the Trade Mark”)

1. 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 entertainment; Production of audio recordings, other than advertising; Production of audio/visual presentations; Distribution (other than transportation) of audio recordings; Publication of electronic books and journals online; Weblog (blog) services (online publication of journals or diaries); Conducting of correspondence courses; Provision of correspondence courses; Provision of information relating to education; Business training services

Class 44:

Hypnotherapy; Providing information including online, about medical services, and veterinary services

(“the Services”).

1. A Notice of Intention to Oppose the removal application was filed by the Opponent on 5 May 2017. On 5 June 2017 the Statement of Grounds and Particulars (“the SGP”) was filed.

2. A Notice of Intention to Defend was filed by the Removal Applicant on 19 July 2017.

Evidence

1. 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”).

2. There is no Evidence in Answer. This is discussed further below.

3. 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.

4. On 28 June 2019 the matter was allocated to me as a delegate of the Registrar to decide.

Late filed material/ Extension of Time request

1. 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.

2. 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.

3. 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.

4. 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.

5. 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.”

6. No further submissions were filed in this regard. It follows that the only evidence before me is that of the Opponent.

The Opponent’s Evidence

1. In her declaration, Ms. Spilsted claimed that she established Hypnobirthing Australia in 2009, registering and maintaining it as a business name since August 2009. She outlined the background to the design and creation of the Trade Mark, asserting that it was first used in Queensland on 25 November 2009. She claimed to have provided the Services, which relate to education and training for parents and practitioners in a method of natural childbirth using hypnotherapy, to a niche market. She asserted that she has “become recognised throughout Australia by both childbirth professionals and the general public”.

2. In relation to this non-use application, she maintained that since 2009 she intended and had used, and continues to use, the Trade Mark in good faith. She outlined and annexed exhibits demonstrating its use at or on

• invoices and receipts issued during the period 2010 to 2017;

• emails during 2014 to 2017;

• educational materials such as assessment tasks, practitioner agreements, membership certificates over the period 2013 to 2017;

• advertising for courses 2013 to 2015;

• publicity material such as magazine articles, YouTube videos from 2013-2015, a television appearance in 2015;

• website screenshots from the Internet Wayback Machine and use on 3^rd party websites during 2010-2017;

• screenshots showing social media use on Facebook from 2010 and Instagram from 2015;

• photographs of the Opponent delivering courses and at conferences/exhibitions in the period 2015 to 2017;

• merchandise such as stickers, bags, hats, water bottles, letterhead.

Submissions

1. As noted above, only the Opponent filed submissions.

2. Relevantly, the Opponent relied on Structureco Inc v Starite Distributors P/L[1] as the basis for submitting that her mere statement of intention to use the Trade Mark was sufficient to rebut the allegation of lack of intention to use in good faith. She contended that the onus then fell on the Removal Applicant to prove the contrary, or bad faith, which it had failed to do.

   [1] (2000) 49 IPR 209 (“Structureco”)

3. In relation to use of the Trade Mark in the relevant period, the Opponent submitted that the Spilsted declaration and associated exhibits demonstrated “real and genuine commercial use” of the Trade Mark both before and after the relevant date.

4. Therefore, the Opponent submitted, she had successfully rebutted the Removal Applicant’s allegations.

Legislation

1. Section 92 of the Act relevantly provides as follows:

   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 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) 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.

2. The application has been filed in accordance with the Regulations (s 92(2)(a)) and is made in respect of all the Services (s 92(2)). There is no evidence of any action concerning the Trade Mark pending in a court (s 92(3)).

3. Therefore, in the circumstances of this matter and for the purposes of s 92(4)(a), it is necessary for the Opponent to rebut one or both allegations that:

• on the day on which the Trade Mark application was filed, 10 June 2013 (“the relevant date”), she had no intention in good faith to use (or authorise the use or assign) the Trade Mark in Australia in relation to all the Services to which the non-use application relates; and

• she has not used the Trade Mark in Australia, or has not used it in good faith in Australia, in relation to those Services at any time in the period of one month ending on the day on which the non-use application is filed, that is, at any time before 27 January 2017  (“the relevant period”).

1. If the Opponent establishes good faith use of the Trade Mark, (or the Trade Mark with additions or alterations not substantially affecting its identity), in the relevant period in relation to the Services, it is taken to have rebutted the allegation in s 100(1)(b): s 100(2). A single instance of bona fide use during the relevant period is all that is required[2].

   [2] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261 [14-17].

2. If the grounds of the non-use application are established, the Registrar has a discretion, under s 101(3) of the Act, to decline to remove the Trade Mark, or to remove it in respect of only some of the Services, if satisfied that it is reasonable to do so. In deciding whether to exercise the discretion not to remove the Trade Mark the Registrar may consider whether the registered owner has used it in respect of similar or closely related goods and/or services (s 101(4)).

Grounds and Onus

1. In respect of the proceedings under section 92, s 100(1) provides the Opponent bears the onus of rebutting the allegations made.

2. While the Removal Applicant initially alleged grounds under s 92(4)(a) and (b), it withdrew its s 92(4)(b) ground following advice from IP Australia that it was not valid.[3]

   [3] This is because the Trade Mark had not been registered for 5 years at the date of its removal application – the then s 93(2).

Consideration and Reasons

1. In the SGP, the Opponent relevantly asserted that she had the intention in good faith to: (i) use the Registered Mark in Australia; or (ii) authorise the use of the Registered Mark in Australia; or (iii) assign the Registered Mark to a body corporate for use by the body corporate in Australia; in relation to the Services. She also listed the use of the Trade Mark in the relevant period and asserted, in the alternative to a finding of use, that it was appropriate for the Registrar to exercise the discretion not to remove the Trade Mark. Other purported grounds and particulars were provided however they are not relevant to my considerations.

2. As noted above, if the grounds are established, the Registrar may decide to remove the trade mark from the Register in respect of any or all the goods and/or services to which the application relates. This application relates to all the Services for which the Trade Mark is registered.

Use of the Trade Mark

1. As noted above, in considering whether the Opponent has rebutted the Removal Applicant’s allegations under s 92(4)(a), the Opponent is required to either establish her good faith intention on the relevant date to use the Trade Mark in relation to the Services or to demonstrate use of the Trade Mark in relation to the Services in the relevant period.

2. In Woolly Bull Enterprises Pty Ltd v Reynolds[4] Drummond J observed that the expression “use in good faith” has a well understood meaning in terms of s.92 of the Act, namely “real”, as opposed to token, use in a commercial sense.

   [4] [2001] 107 FCR 166 [153-154]

3. In relation to the type of evidence that would be sufficient to establish trade mark use, “the tribunal may not be persuaded by evidence that is solely from the internal files of the opponent”[5] or of a circumstantial nature[6], although one invoice, if genuine, will suffice[7]. Little weight is to be given to assertions of use which are not supported by documentary evidence[8].

   [5] Re Nodoz Trade Mark [1962] RPC 1.

   [6] Trina Trade Mark [1977] RPC 131.

   [7] Prosimmon Golf (Aust) Pty Ltd v Dunlop Australia Ltd (1987) 9 IPR 425; Geo W McPherson Nominees Pty Ltd. v Remington Arms Co. Inc. (1999) 47 IPR 636.

   [8] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8.

4. I have examined the Opponent’s evidence of use and, as noted above (paragraph 18), there is significant evidence of Trade Mark use by the Opponent on invoices, receipts, letters, emails, brochures, course materials and advertising and promotional materials.

5. While some evidence is undated[9], or appears to have dates superimposed[10]  or shows use of the Trade Mark by persons other than the registered owner[11], there is still significant material substantiating the Opponent’s claims of her use of the Trade Mark in the relevant period. For example, Exhibit MS-14 also includes Certificates of Attendance displaying the Trade Mark and signed by the Opponent in September 2013 and Annual Certificates of Membership that were “authorised” by the Opponent in 2013/14 and 2014/15. Exhibit MS-19 includes various business-related emails, each displaying the Trade Mark, sent by the Opponent over the period June 2014 to January 2017.

   [9] Exhibits MS-11 and MS-17, various pages.

   [10] Exhibits Exhibits MS-15 and MS-16.

   [11] Practitioner Agreements in Exhibit MS-14.

6. On this basis I am satisfied that the evidence supports the Opponent’s contentions that she used the Trade Mark in relation to the Services in the relevant period. Given this, it is unnecessary for me to consider the Opponent’s intention at the relevant date or the exercise of the Registrar’s discretion.

7. It follows that I am satisfied the Opponent has successfully rebutted the Removal Applicant’s allegations under paragraph 92(4)(a). Therefore, the grounds on which the removal application was made have not been established.

Decision

1. Section 101 of the Act relevantly provides:

101 Determination of opposed application--general

(1) Subject to subsection (3) and to section 102, if:

(a) the proceedings relating to an opposed application have not been discontinued or dismissed; and

(b) the Registrar is satisfied that the grounds on which the application was made have been established;

the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

1. The Removal Applicant has not established the grounds for removal of the Trade Mark. Accordingly, the Trade Mark will remain on the Register.

Costs

1. In its submission, the Opponent sought costs. As the Opponent has been successful, I award costs against the Removal Applicant under section 221 of the Act in the amounts set out in Schedule 8 of the Regulations.

Mary-Ann Cooper

Hearings Officer

Trade Marks and Designs Oppositions and Hearings

12 August 2019