Michael Isgro v 12 Round Pty Ltd

[2018] ATMO 89

TRADE MARKS ACT 1995

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

Re:Opposition by Michael Isgro to application under section 92 of the Act by 12 Round Pty Ltd to for partial removal of trade mark number 1492483 (9, 25, 41) - 12rounds - in the name of Michael Isgro.

Delegate:	Decision on the Written Record Iain Campbell Thompson
Representation:	Opponent: Self represented Applicant: Holding Redlich
Decision:	2018 ATMO 89 Trade Marks Act 1995 Application under paragraph 92(4)(a) of the Act for partial removal; Opponent has shown intent to use Trade Mark – Trade Mark use in relation to impugned services; Trade Mark to remain registered for all of the services in respect of which removal was sought.

Background

1. In these proceedings under section 96[1] of the Trade Marks Act 1995 (‘the Act’) 12 Round Pty Ltd (‘the Applicant’) made application on 5 May 2016 under paragraph 92(4)(a) of the Act for the partial removal of the trade mark which appears below:

Registration No:           1492383

Priority Date:               23 May 2012
Goods/Services:          Class 9: DVDs; pre-recorded DVDs

Class 25: Clothes

Class 41: Pay television entertainment; provision of entertainment, sporting or cultural services from customer loyalty and frequent buyer schemes; television entertainment

Trade Mark:                12rounds

(‘the Trade Mark’)

[1] Section 96 allows that any person may oppose an application made under subsection 92 of the Act for the removal of a trade mark from the register of trade marks.

1. Partial removal is sought in respect of all of the services in Class 41 for which the Trade Mark is registered (‘the Impugned Services’).

2. On 21 July 2016, the owner of the Trade Mark, Michael Isgro (‘the Opponent’), filed a Notice of Intention to Oppose Removal.

3. On 4 August 2016, the Opponent filed a Statement of Grounds and Particulars (‘SGP’) which details:

   On 26 May 2013 ‘12 Rounds’ All Corners of Australian Boxing was launched as a crowd funding campaign on Pozible, which is still a work in progress (url This campaign is still public and can be accessed if required.  The project offers goods and services by way of rewards ranging from the following all with 12 ROUND logos:

   ·    Signed poster, tee-shirts, caps, DVDs, film credits, complimentary tickets to events (boxing promotions, boxing gloves, sponsorship offers, associate producer ie film/documentary, promotional material, business card.

   To conclude, the issues [in] Class 41 are all covered with my above facts.

4. On 13 September 2016, the Applicant filed a Notice of Intention to Defend.

5. Thereafter, the parties filed their evidence as is further discussed below.

6. Both parties have been advised of their right to be heard or to make written submissions.  Neither party has availed themselves of these opportunities.  Now, in order that the Registrar may discharge her obligation to decide the matter it has been allocated to me, one of her delegates, for my decision on the basis of the written record which is comprised of those materials referred to in the preceding paragraphs.

Evidence

1. The evidence in this matter is comprised of the following declarations:

   In Support

   Sam Duncan, former owner of Sambo Media Pty Ltd, made on 30 November 2016;

   Elliot Chapple, Marketing Manager of Pozible Pty Ltd, made on 29 November 2016;

   In Answer

   Barton Donaldson, Solicitor of Holding Redlich, made on 8 February 2017, with Exhibits BD1 to BD7;

   Timothy West, Sole Director and Company Secretary of the Applicant, made on 28 February 2017.

2. Both the Opponent (in the SGP) and Mr Chapple refer to the Pozible^®[2] website at where the following appears:

   [2] A social fundraising (or ‘crowdfunding’) Internet platform.

   12 Rounds - All Corners of Australian Boxing

   Overview

   This is a journey into Australian Boxing’s past and present; a 12 episode, ‘12 round’ journey that will explore all corners of the sport. Each round will fit a particular theme; there will be Champion Rounds, Indigenous Rounds, Immigrant Rounds, The Polynesian Round, The British Invasion Round, the Corporate Round, the Controversial Round, the Bush Round and the Female Round.

   ‘12 Rounds’ is a 12 part documentary style series that will showcase some great Australian Boxing stories. Former World Champion Johnny Famechon, Australian Boxing Legend Tony Mundine, British Immigrant and Commonwealth Games Champion Kenny Salisbury, Italian Immigrant Boxer Luigi Coluzzi, Sydney Barrister Ben Debuse and Boxer from the Bush Charkey Ramon are just some of the names that will feature in the Rounds. Help us tell these stories to their full potential by donating here on Pozible, and benefit by choosing your reward.

   Timeframe and crew

   As of the launch of this campaign the first 2 Rounds have been completed with Michael’s own funding. With 10 Rounds remaining, the goal is to complete approximately one round each six weeks with the total project scheduled for completion by the end of 2014.

   Michael has teamed up with Sydney based Production Companies Sambo Media and Sync Pictures to make this project come to life. Sam Duncan from Sambo Media ( is on board as an Assistant Producer / 2nd Camera and Bruce Inglis from Sync Pictures is taking care of the majority of Post Production and Main Camera.

   Synopsis

   12 Rounds is an exploration of all aspects of boxing and ‘the fight game’ in an Australian context. Boxing is a great sport that appeals to a varied cross section of society for an array of reasons; personal challenge, depression management, controlled anger release, comradeship, fitness, discipline and so on. Boxers come from varied backgrounds - indigenous boxers, immigrant boxers, corporate boxers, female boxers, average Joe boxers and of course the champions that can emerge from any of these backgrounds. 12 Rounds seeks to explore the attraction to boxing and the struggle involved. For example, the story of 50 year old Barrister Ben Debuse entering the ring for his first fight is as compelling as the story of the championship boxer with world title belts.

   12 Rounds is a series of stories rich in human interest. The fear, the discipline, the primal instincts the talent, the highs the lows of life in the fight game. This is a story we can all relate to because above all it is a story of human challenges and achievements.

   About Michael

   Michael Isgro is a former Australian Amateur Heavyweight Boxing Champion with a string of pro fights under his belt. His passion for boxing started as a teen in the late seventies when Muhammed Ali visited a local gym in Woolloomooloo, Sydney. Ali based his training camp there and Michael was lucky enough to help out as an unofficial cornerman. This led Michael on a journey to become a boxer, winning national titles in the heavyweight division before turning professional. His professional career was cut short by injury. Michael’s association with boxing has continued ever since. Michael trains amateur fighters, corporate participants, local female youths and promotes fight nights in support of a local charity. Annually he travels to the United States to visit some of the top boxing gyms and trainers and to bring the knowledge back to share with his classes.

   Final note

   We’d like to thank you for being a part of this journey and exploring Australian boxing from a whole new perspective with us. Any contribution, even the smallest possible contribution is absolutely appreciated and we look forward to sharing the story of 12 Rounds with you!

   [Stress added]

3. The above ‘pitch’ was open from 26 May 2013 to 26 July 2013 and is one for financial support to enable the making of a documentary series about boxing in Australia.  The rewards, inducements or recognition for such support which appear on Pozible^® include:

   $50 - Signed ‘12 Rounds’ credits poster with your name and the names of all that have made the documentary series possible. Poster signed by former Heavyweight Boxer and series Director, Michael Isgro.

   A$5000 +Signed ‘12 Rounds’ credits poster + ‘12 Rounds’ T-Shirt + ‘12 Rounds’ cap + ‘12 Rounds’ DVD Box Set + Your name in the film’s ‘made possible by’ credits + 2 x Sydney charity fight night ringside tickets + Exclusive ‘12 Rounds’ Boxing Gloves + 12 Rounds Poster signed by big names in Australian Boxing history

   Associate Producer credits for amounts at or over $10,000

4. Other material in the Opponent’s evidence suggests that he has engaged a cameraman, and shot footage for the first two episodes of his proposed series.

5. The Applicant’s Evidence in Answer is couched in terms of its perceptions of the non-use of the Trade Mark.

6. The Applicant’s solicitor, Mr Donaldson, states:

   4. On 2 February 2017, I conducted a search using the Google search engine using the search criteria of “Michael Isgro” and “12 Rounds”.

   5. The first 10 search results are annexed to this declaration at Exhibit BDl.

   6. Based upon my review of the search results, those web pages that appear to be relevant to the Mark show links to the Pozible campaign page for 12 Rounds (annexed at Exhibit BD2) and a post on the Boxfit Woolloomooloo Facebook page on 2 June 2013 referring to the Pozible campaign (annexed at Exhibit BD3).

   7. I note on page 2 of Exhibit BD2, under the heading “Overview”, that “12 Rounds” is identified as a “ ... 12 part documentary style series”.

   8. I also note on page 3 of Exhibit BD2, under the campaign rewards for “A$500+”, one of the rewards includes the “12 Rounds DVD Box Set”.

   9. I also note in the third paragraph of the Face book post in Exhibit BD3 that “12 Rounds” is identified as a “ ... documentary style series”.

   10. Based upon my review of the search results and the identified web pages, I have not been able to identify any evidence from the Pozible campaign page in Exhibit BD2 or the Face book post in Exhibit BD3 that the Mark has been used or was intended to be used in good faith in relation to the Class 41 Services.

   11. On 2 February 2017, I conducted a search of the Australian Securities and Investments Commission (ASIC) database for organisation and business names using the search criteria “12 Rounds”.

   12. The search results are annexed to this declaration at Exhibit BD4.

   13. I note that the ASIC search results appear to indicate that there are no company names or business names registered to any persons, including Michael Isgro, in respect of the company or business name “12 Rounds”.

   14. Based upon my review of the search results, I have not been able to identify any evidence from the ASIC search at Exhibit BD4 that the Mark has been used or was intended to be used in good faith in relation to the Class 41 Services.

   15. On 2 February 2017, I conducted two searches of the Internet Movie Database, one search using the search criteria of “12 Rounds” for relevant films and/or television programs, and one search using the search criteria of “Michael Isgro” for any persons involved in films and/or television programs.

   16. The search results are annexed to this declaration at Exhibit BD5 and Exhibit BD6.

   17. I note in Exhibit BD5 that there are no entries for a documentary series or television series titled “12 Rounds” with any association with Michael Isgro.

   18. I also note in Exhibit BD6 that the only result for a “Michael Isgro” refers to an acting credit on a film not in reference to, or in connection with, the Mark.

   19. Based upon my review of the search results, I have not been able to identify any evidence from the IMDb searches at Exhibit BD5 and Exhibit BD6 that the Mark has been used or was intended to be used in good faith in relation to the Class 41 Services.

   20. On 2 February 2017, I conducted a search of Wikipedia using the search criteria “12 Rounds”.

   21. The first 20 search results are annexed to this declaration at Exhibit BD7.

   22. I note in Exhibit BD7 that the search results do not contain any reference to any films or television shows called “12 Rounds” connected with Michael Isgro.

   23. Based upon my review of the search results, I have not been able to identify any evidence from the Wikipedia search at Exhibit BD7 that the Mark has been used or was intended to be used in good faith in relation to the Class 41 Services.

7. And Mr West, the Applicant’s Director and Company Secretary, relevantly states:

   I am not aware of any fact, matter or circumstance that indicates:

   (a) Mr Michael Isgro intended to use the Mark in good faith in Australia in relation to the Class 41 Services;

   (b) Mr Michael Isgro has used the Mark in good faith in Australia in relation to the Class 41 Services; and

   (c) Mr Michael Isgro is the operator of a pay television or television station or the operator of a customer loyalty or frequent buyer scheme.

8. I will observe now that the absence of use of the Trade Mark on various Internet websites does not establish that it has not been used in Australia, nor does it bear on whether the Opponent had an intention to use the Trade Mark in relation to the Impugned Services on the day on which the application for the registration of the Trade Mark was filed. Moreover, the absence of trade marks from business and company registers is not unusual: such absences might strengthen any argument that such use of the sign as might have occurred is as a trade mark rather than as a business or a company name. Additionally, in the light of the use of the word ‘or’ within the linking phrase lying between subparagraphs 100(1)(a) and 100(1)(b), even if the mark has never been used this would be insufficient of itself to establish removal based on s 92(4)(a). Actual use would merely be a sufficient, but not necessary, matter that would defeat removal.

Legal Framework

1. Section 92 of the Act relevantly provides:

   92Application 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. Section 100 of the Act relevantly provides:

   100Burden 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;

3. Accordingly, the onus is on the Opponent to establish:

   At the time of filing the application for registration of the Trade Mark (23 May 2012) he had an intention to use it in good faith in relation to the Impugned Services; or that

   He used the Trade Mark in relation to the Impugned Services before 5 April 2016.

4. As regards the nature of the onus born by the Opponent, subsection 101(1) provides:

   101Determination 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.

5. In Blount Inc v Registrar of Trade Marks[3] Branson J stated of the word ‘satisfied’:

   Where the Act requires the Registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy [1965] HCA 46; (1965) 112 CLR 517 at 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.

   [3] [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37-241.

6. I further note now that in terms of sections 92(2)(a) and (3) of the Act:

   The application for removal has been made in accordance with the regulations;

   The Registrar has not been notified of an action concerning the trade mark pending in a prescribed court.

Consideration

Intention to use the Trade Mark:

1. In Secondment Pty Ltd v MCI Group Holdings SA[4] the Registrar’s delegate observed:

   The act of applying for a trade mark is prima facie evidence of an intention to use it[5], or as Dodds Streeton J phrased it in Suyen Corporation v Americana International Limited[6]: “[A]s possession of the requisite intention is a pre-condition of entitlement to apply, it may readily be presumed from the fact of application.” Taking the intention arising from the act of filing into account, the onus may be shifted to the Applicant by making a positive statement regarding its intention to use the trade mark. In Structureco Inc v Starite Distributors Pty Ltd the Hearing Officer found:[7]

   Although the opponent to removal does bear the initial onus, in accordance with the legislation, I think that, in the case of applications for removal under s 92(4)(a), where the primary allegation regards the state of mind of an applicant for registration about whether it intends to use a mark in good faith, then that onus is not high. I believe that it is so low that it can be overcome if the opponent or its agent states that it was the case that the applicant for registration had an intention to use the mark in good faith.

   [4] [2013] ATMO 71 at [9].

   [5]  Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391 (at 401).

   [6] Suyen Corporation v Americana International Limited [2010] FCA 638; (2010) 87 IPR 262 at [197].

   [7] Structureco Inc v Starite Distributors Ltd (2000) 49 IPR 209; and see Bunter v Hobarama LLC [2005] ATMO 49; (2005) 67 IPR 216 at 222.

2. Here, however, the Opponent has made no express statement that it was his intention to use the Trade Mark at the date of filing the application to register the Trade Mark.

1. However, the Opponent’s actions after the date of filing the application to register the Trade Mark may reflect on his intention at the filing date thus defeating the application (and also defeat the application for removal by rebutting the second leg of paragraph 92(4)(a)). In Conde Nast Publications Pty Ltd v Virginia Taylor[8] Burchett J observed:

   But it is commonplace of the law of evidence that later events may cast light upon the true position at an earlier date.

   [8] Conde Nast Publications Pty Ltd v Virginia Taylor [1998] FCA 864; (1998) 41 IPR 505 (at 509).

2. The question accordingly resolves itself to this: ‘Do the Opponent’s actions on 26 May 2013 in setting up the Pozible^® crowdfunding appeal, engaging a cameraman, and shooting footage for two episodes for his twelve-part television series support the view that the Opponent had the intention to use the Trade Mark at the filing date?’

3. It seems to me that they do, especially on top of the prima facie intention arising from the filing of the application.

Use of the Trade Mark

1. I add that, in my view, the Opponent used the Trade Mark.  In Woolly Bull Enterprises Pty Ltd v Reynolds[9] (‘Woolly Bull’) Drummond J held that a single bona fide use of the mark in the relevant period is sufficient to answer an application for removal under the current Act. See also Unilever Australia Ltd v Karounos.[10]

   [9] [2001] FCA 261; (2001) 107 FCR 166 at [14]–[17].

   [10] (2001) 113 FCR 322 at [64].

2. In Woolly Bull His Honour observed, ‘[U]se in good faith’ means ‘real, as opposed to token, use in a commercial sense’. [11]  The expression connotes ‘a genuine intent to use the mark for commercial purposes’: see also, Liquideng Farm Supplies Pty Ltd v Liquid Engineering 2003 Pty Ltd.[12]

   [11] Ibid at [16].

   [12] [2009] FCAFC 7; (2009) 175 FCR 26 (Tamberlin, Sundberg and Besanko JJ) at [56].

3. In Dick Smith Investments Pty Ltd v Ramsey[13] (‘Aussie Mite’) the appellant relied upon the following instances to support the argument that it had used the trade mark impugned in those proceedings:

   The first instance occurred when Mr Smith featured in a skit on The Chaser’s ABC television program in August 2010 in the lead-up to the 2010 federal election.

   The second occurred during a lengthy interview with Mr Smith on radio station 5AA in Adelaide on 28 March 2011. The interviewer was Leon Byner.

   [13] [2016] FCA 939 at [99].

4. After some discussion of Mr Ramsey’s arguments that there had to be a physical offering or sale of goods in order to establish use, Katzmann J made the following observations in Aussie Mite[14] in relation to the above claimed uses:

   [14] Ibid at [133].

   In the following authorities, however, upon which the Dick Smith parties relied, that occasion squarely arose. To the extent that these authorities detracted from Mr Ramsey’s primary position, he had no satisfactory answer to them.

   The first is Hermes Trade Mark [1982] RPC 425 (“Hermes”). In that case a French company, Hermes Société Anonyme, applied to rectify the register by expunging for non-use during the statutory period the registration of HERMES, a trade mark registered in a class for watches and clocks. Before the statutory non-use period (five years) the registered owners had sold watches under the mark, but during the statutory period they had sold none, and no clocks either. They claimed, nonetheless, that they had used the trade mark in relation to goods in the relevant class because they had used the mark in advertisements in a directory of trade names ever since they purchased the mark, that is for more than 20 years before the expiration of the non-use period, on invoices for repairs to HERMES watches, on orders to their suppliers during preparations for a re-launch of the HERMES watches on the market and price-lists prepared for the same purpose. The application failed before the Assistant Registrar of Trade Marks and the appeal was dismissed.

   Falconer J sitting in the Chancery Division of the High Court of Justice in England considered that use of a mark in advertising need not be “concurrent with a placing of the goods on the market if it is to be regarded as ‘trade mark’ use ...”, although to amount to use sufficient to defeat an application to remove the mark from the register for non-use, it had to be “use in the course of trade” (picking up on the definition of “trade mark” in s 68(1) of the Trade Marks Act 1938 (UK) (at 429 and 430)). His Honour accepted that use of a trade mark in an order to suppliers to acquire goods to be marketed by the trade mark owners under the mark was a use of the mark in the course of trade “in ... other relation to the goods”, although the goods were not then in existence. He described this (at 431) as “a use in the course of trade in the watches — their acquisition for future sale”. He expressed his agreement with the Assistant Registrar that the phrase “in the course of trade” is “wide enough to embrace the steps necessary for the production of the goods as well as the actual placing of them on the market”. His Honour also said this at 430:

   [I]f the registered proprietor should commence a series of advertisements featuring his mark as part of an introductory campaign, prior to putting his goods on the market under the mark, but before they were actually on the market, in my judgment such use would clearly be use of the mark in the course of trade, not upon the goods or in physical relation thereto, but it would be in other relation thereto, the point being that it would be use in the course of trade in those goods, albeit in advertisements.

   But his Honour did not consider that advertisements appearing annually in a trade directory during the statutory non-use period (five years under the UK Act s 26(1)(b)) amounted to use of the trade mark. The particular evidence which his Honour found was insufficient to amount to use was reproduced at 428 of the judgment. It was the evidence of Mr Crockett, who was a director of the registered trade mark owner:

   I am advised that advertisements featuring the trade mark in relation to the goods and the existence of printed price lists during the five-year period ending 18 March 1977 without there being goods available to meet orders which may be placed as a result of such advertising and issue of price lists may not constitute a complete defence in these proceedings ... but I wish to make it clear that my company have never abandoned the trade mark and continually advertised it in the way referred to herein, in the belief that this would keep the trade mark in the minds of those engaged in the trade and in the belief that this would protect them from any allegation of non-use of the trade mark.

   These advertisements, his Honour held at 430, were not advertisements put out in the course of trade in the goods covered by the registration. If those advertisements were insufficient to amount to use of the trade mark in the course of trade, it is difficult to see how the unpaid advertising relied upon in the present case would be sufficient.

   Nevertheless, in Buying Systems (Australia) Pty Ltd v Studio SRL [1995] FCA 1063; (1995) 30 IPR 517; [1995] AIPC 91–119 (“Buying Systems”) Gummow J accepted that steps taken before any sale of the goods in question could be use of a trade mark under the 1955 Act — as long as there was an existing intention to offer or supply the goods in trade. In the present case there is no dispute that at all relevant times the trade mark owner had that intention.

   In Buying Systems, Studio SRL, an Italian company, applied to register the word “Studio” for goods specified as “fashion and hairdressing magazines”. An Australian company, Buying Systems (Australia) Pty Ltd, opposed the application, alleging, amongst other things, that Studio SRL could not properly claim to be the proprietor of the trade mark because Buying Systems (Australia) was already using “Studio” as a trade mark. A delegate of the Registrar dismissed the opposition, but on appeal, Gummow J reversed the delegate’s decision and refused the Studio SRL’s application, holding that Buying Systems (Australia)’s actions in obtaining business cards, printing letterhead, contacting potential advertisers, making arrangements for the placing of some advertisements and distributing a large number of copies of a promotional brochure in respect of a new magazine (no edition of which had yet been produced, let alone sold) were sufficient to constitute a relevant use of the mark in Australia for the purpose of indicating, or so as to indicate, a connection in the course of trade between it and the new magazine.

   Gummow J had come to a similar conclusion in an earlier case, New South Wales Dairy Corporation v Murray Goulburn Co-Operative Company Ltd [1989] FCA 124; (1989) 86 ALR 549; 14 IPR 26 (“Dairy Corporation”), to which neither party referred in submissions. Although this judgment was relevantly concerned with an application for removal from the Register for non-use under s 23(1)(b) of the 1955 Act, the words used in s 23(1)(b) are not materially different from those used in s 92(4)(b).

   In Dairy Corporation, as in the present case, there had been no sale of the relevant product (milk) during the statutory period. Orders had been placed for the production of containers and art work provided to the manufacturer of the containers and during the period the first packs were delivered to the trade mark owner, the first trial production run had taken place, and, on the very last day, “the first commercial production of chocolate milk”. But the goods were not available for sale, let alone sold, until after the expiration of the period.

   Gummow J held at 44 (citing Hermes at 432) that “[t]he phrase ‘in the course of trade’ is wide enough to cover steps necessary for the production of goods, as well as the actual placement of the goods on the market”.

5. Although the abovementioned cases are generally concerned with vendible goods, the observations apply here with equal force to services.

6. I consider the circumstances of this matter to be analogous to those referred to above within Aussie Mite, Buying Systems and Dairy Corporation: there had been public uses of the trade marks involved and genuine commercial preparations made for placing the goods onto the market.  It is likewise with the Opponent’s public use of the Trade Mark on Pozible^® and the preparation of his entertainment services.

7. The Opponent’s ‘pitch’ on Pozible^® makes several usages of the expression ‘12 Rounds’. In my consideration, these usages meet the definition of a trade mark: section 17 of the Act provides:

   17What is a trade mark?

   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.

   Note:For sign see section 6.

8. The ‘sign’ ‘12 Rounds’ clearly indicates a connection in the course of trade between the Opponent and the television entertainments that he was in the process of preparing and also distinguishes those services from the services dealt with or provided by other traders. 

9. I also observe that the use of the Trade Mark as ‘12 Rounds’ and not as registered (‘12rounds’) is of a substantially identical trade mark and therefore, in terms of subsection 7(1) of the Act, a use of the Trade Mark: Optical 88 Ltd v Optical 88 Pty Ltd (No 2)[15] and The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited.[16]

   [15] [2010] FCA 1380; (2010) 275 ALR 526; (2010) 89 IPR 457 per Yates J at [256].

   [16] [1963] HCA 66; (1961) 109 CLR 407 per Windeyer J at 414.

10. The Opponent’s use of the sign ‘12 Rounds’ during the period 26 May 2013 to 26 July 2013 on Pozible^® was, accordingly, a use of the Trade Mark in relation to his nascent entertainment services during the Relevant Period. This use in itself is sufficient to establish the Opponent’s opposition to the application under paragraph 92(4)(a) and also, if it were necessary, reflects beneficially upon the Opponent’s intention to use the Trade Mark at the time the application to register the Trade Mark on 23 May 2012 at least in relation to television entertainment and pay television entertainment.

11. It is probable, in my view, that the expression ‘provision of entertainment, sporting or cultural services from customer loyalty and frequent buyer schemes’ is broad enough to include services which are ‘a thing [or things] of the same kind’[17] or ‘the same kind of thing’[18] as the inducements offered by the Opponent in his ‘pitch’ on Pozible^®.

    [17] Jackson & Co v Napper (1886) 35 Ch D 160, 178.

    [18] In re Hicks’s Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636.

12. Accordingly, the Opponent has established his opposition to the removal of the Trade Mark.

Decision

1. In terms of subsection 101(1) of the Act, above, the evidence in this matter is sufficient to satisfy me that:

   The evidence filed by the Applicant does not displace the presumption inherent in the filing of the application that the Opponent then intended to use the Trade Mark; and

   It may in fact be inferred from the Opponent’s post-filing activity preparatory for use of the Trade Mark that at the time of filing the Trade Mark he intended to use it; and

   In any event, the Opponent used the Trade Mark in good faith in relation to the Impugned Services before 5 April 2016.

2. Accordingly, as one of the Registrar’s delegates I find that the Opponent has established his opposition to the application for partial removal of the Trade Mark and that it may remain registered for the Impugned Services.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
7 June 2018