Mind Your Own Property Pty Ltd v MYOB Technology Pty Ltd

[2018] ATMO 34

TRADE MARKS ACT 1995

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

Re:Opposition by Mind Your Own Property Pty Ltd to application under section 92 of the Act by MYOB Technology Pty Ltd for removal of trade mark number 1323071 (36) – MIND YOUR OWN PROPERTY - in the name of Mind Your Own Property Pty Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: Bradley Maguire, Director Applicant: Siobhan Ryan of Counsel instructed by Ian Drew of Davies Collison Cave
Decision:	2018 ATMO 34 Trade Marks Act 1995 (Cth) - section 96 opposition to s 92(4)(b) application for removal - Removal Opponent’s evidence does not show use of the Trade Mark during the relevant period or obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register

Background

1. This decision is pursuant to an application made on 3 June 2016 under s 92(4)(b) of the Trade Marks Act 1995 (‘Act’) by MYOB Technology Pty Ltd (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of all of the services for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.	1323071
Filing date	29 September 2009
Services	Class 36: Real property management; time-share property management; accommodation letting agency; advisory services relating to real estate ownership; advisory services relating to real estate leasing; agency services for the leasing of real estate property; budget account services; computerised banking services; computerised financial services; computerised transfer of funds; conducting of financial transactions; consultation services relating to real estate; estate agencies; estate agency; estate agent services; financial analysis; financial services; information services relating to real estate; insurance agency services; insurance arranging services; insurance brokerage; insurance brokering; insurance for property owners; insurance management services; insurance services relating to property; insurance services relating to real estate; internet banking; investment information; land leasing services; leasing of accommodation; leasing of apartments; leasing of buildings; leasing of farms; leasing of freehold property; leasing of houses; leasing of office space; leasing of property; leasing of real estate; leasing of shopping premises; letting of apartments; letting of office accommodation; letting of showrooms; loan services; loan services for property investment; management of property; management of real estate; monitoring of real estate; monitoring of leased property being real estate; property leasing (real estate property only); property portfolio management; provision of financial information; provision of information in relation to real estate; provision of information relating to financial services; provision of information relating to mortgages; provision of information relating to property (real estate); provision of information relating to real estate; provision of real estate loans; real estate administration; real estate advisory services; real estate agencies; real estate agency services; real estate agents services; real estate assessment (financial); real estate consultancy; real estate insurance services; real estate investment; real estate investment advice; real estate investment management; real estate investment services; real estate lease renewal services; real estate lease surrender services; real estate leasing; real estate management; real property letting; real property management; realty services; rental of accommodation; rental of apartments; rental of buildings; rental of office space; rental of offices (real estate); rental of permanent dwellings; rental of property; rental of real estate; rental of safety deposit lockers; rental of serviced offices (real estate); renting of apartments; renting of commercial premises; renting of flats; renting of houses; renting of offices; renting real estate; research services relating to real estate; residential investment advice; risk management (financial); risk management (real estate); risk management consultancy (financial); risk management consultancy (real estate) (‘Registered Services’)
Owner	Mind Your Own Property Pty Ltd
Trade Mark	MIND YOUR OWN PROPERTY (‘Trade Mark’)

1. Mind Your Own Property Pty Ltd (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 16 August 2016 and a Statement of Grounds and Particulars (‘SGP’) on 15 September 2016.  The Applicant filed a Notice of Intention to Defend on 18 October 2016.

2. The Opponent subsequently filed evidence in support of its opposition to removal.  The Applicant filed evidence in answer and the Opponent filed evidence in reply.  The parties’ evidence will be discussed in more detail below. 

   4. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  On 11 August 2017 the Applicant requested an oral hearing. The matter was set down for a hearing in Canberra on 21 February 2017. I was allocated to decide the matter as a delegate of the Registrar of Trade Marks.  In line with usual practice, an email was sent to the parties on 21 November 2017 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 6 February 2018 (‘Opponent’s Submissions’) and the Applicant filed written submissions on 13 February 2018 (‘Applicant’s Submissions’).  At the hearing Siobhan Ryan of Counsel, instructed by Ian Drew of Davies Collison Cave represented the Applicant, appearing in person and Bradley Maguire represented the Opponent, appearing by telephone. 

   5. 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 oral submissions made at the hearing on 21 February 2018:

   ·The Application for Removal;

   ·The Notice of Intention to Oppose and SGP;

   ·The Opponent’s Evidence in Support;

   ·The Applicant’s Evidence in Answer;

   ·The Opponent’s Evidence in Reply;

   ·The Opponent’s Submissions; and

   ·The Applicant’s Submissions.  

   The Law

3. Part 9 of the Act deals with removal of trade marks from the Register for non-use. In respect of this matter, s 92 of the Act 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:   

   …

   (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.

4. Thus, the allegation under s 92(4)(b) is that the Opponent has not used the Trade Mark upon or in relation to the Registered Services at any time in the three year period ending on 3 May 2016 (‘relevant period’).

5. I note also 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 trade mark application,[1] and I confirm that five years since filing the trade mark application have in fact passed.

   [1] Per s 93(2) of the Act.

6. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 of the Act 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:
   [...]

   (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

   [...]

   (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.

7. The burden of proof is the ordinary civil standard of the balance of probabilities.[2]

   [2] Pfizer Products Inc. v Karam [2006] FCA 1663 and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156.

8. In accordance with s 101 the Registrar may decide to remove the Trade Mark 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.[3]

   [3] S 101(3) of the Act.

9. 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, overwhelmingly convincing proof’.[5]

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

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

   Opponent’s Evidence

10. The Opponent’s evidence in this matter consists of two declarations. The first declaration was made on 25 January 2017, by Bradley John Maguire, Sole Director for the Opponent (‘Maguire 1’) with exhibits 1 to 21.  The second declaration was made in reply on 7 July 2017 by Bradley John Maguire (‘Maguire 2) with exhibits R1 to R4.  

11. Maguire 1 contains the following claims/statements, paraphrased below:

    ·The Opponent was incorporated on 29 September 2009 and registered the domain names <mindyourownproperty.com> and <mindyourownproperty.com.au> around that time. 

    ·The Opponent aimed to create an online property management system to enable owners of residential investment properties to manage their own property.

    ·Between September 2009 and October 2013 the Opponent developed a comprehensive software specification approximating 180 pages however for reasons of commercial confidentiality does not include the specification as an exhibit.  It spent approximately $50,000 for this purpose.

    ·On 7 May 2013 Mr Maguire met with Innovent Business Solutions Pty Ltd to discuss the development of an online property management system and a non-disclosure agreement was entered into on 30 July 2013.  During discussions with Innovent Business Solutions Pty Ltd in 2013 the Trade Mark was used to refer to the proposed software system and in mock-ups of the software service the Trade Mark was used.

    ·Due to the costs of software development, between October 2013 and July 2014 Mr Maguire searched for a software development partner to assist in developing the Mind Your Own Property Service.

    ·On 12 February 2015 the Opponent assigned all its intellectual property to Rentfy Holdings Pty Ltd.  Mr Maguire indirectly owns a majority of the shares.  Rentify Holdings spent more than $500,000 on further development of the software.

    ·The Mind Your Own Property software was ultimately released by Rentify Pty Ltd (a subsidiary of Rentify Holdings Pty Ltd) under the brand name ‘Rentify’ and only released in West Australia[6] however Mr Maguire intended to release the software under the Trade Mark elsewhere in Australia.  The purpose of releasing the software under the Rentify name was to protect the Trade Mark from any adverse association in the event of poor market reception.  The Rentify software was withdrawn on 30 September 2016.

    [6] The date of the release is unclear however presumably between 12 February 2015, the assignment of the intellectual property to Rentify Holdings Pty Ltd and before 30 September 2016, when it was withdrawn from the market.

    ·The Trade Mark was applied to a promotional pen used as a prop in business discussions in 2013.

12. Maguire 2 states that the WayBack Machine does not operate to record all websites every day.  There are a number of reasons why a website or document might not be archived or indexed by the WayBack Machine.  The use of this service is not required to show good faith use of a Trade Mark and the Drew Declaration does not establish that the Opponent has not used the Trade Mark.

    Applicant’s Evidence

13. The Applicant’s evidence in this matter consists of a declaration made on 2 May 2017, by Ian Anthony Drew, a Registered Trade Marks Attorney and Principal of Davies Collison Cave Pty Ltd, the Opponent’s representative with Exhibits IAD-1 to IAD-8 (‘Drew Declaration’). 

14. The Drew Declaration provides no evidence about the Applicant.  Rather it contains the following:

    ·A number of printouts of the websites for and during the non-use period obtained through use of the WayBackMachine.  None of them show any use of the Trade Mark.

    ·Extracts from corporate records in Australia and New Zealand of companies connected to Mr Maguire.

    Discussion

15. To successfully oppose the Application under s 92(b) of the Act the Opponent must establish that it has used the Trade Mark pursuant to s 100 of the Act (either through use or circumstances that were an obstacle to use) or, in the event that the Opponent fails to establish such use, the Registrar exercises its 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

    19.     I find that the Opponent failed to establish that the Trade Mark was applied to a software product that provides the Registered Services during the relevant period; indeed the only software referred to in Maguire 1 was released under the brand name ‘Rentify’ after the non-use period.  While the Opponent may have spent substantial funds on the development of the software program, such expenditure does not amount to use of the Trade Mark, or indeed prove intention to use the Trade Mark (noting that the software was ultimately released as Rentify).

    20.     However it is not necessary that there be an actual dealing in the Registered Services for there to be Trade Mark use.  In Lomas v Winton Shire Council [2002] FCAFC 413 the Full Court said (emphasis added):

    It may even be possible to establish use where the mark has been used in an advertisement of goods in the course of trade in circumstances where there is an existing intention to offer or supply goods bearing the mark in trade or there is an actual trade or offer to trade in the goods bearing the mark - Moorgate Tobacco Co Ltd v Phillip Morris Ltd and Anor [No. 2] [1984] HCA 73; (1984) 156 CLR 414 at 433-4. However, where there is no actual trade or offer to trade in goods bearing the relevant mark in Australia or any existing intention to offer or supply such goods in trade, but merely preliminary discussions and negotiations about whether the mark would be so used, there is no use so as to constitute ownership of the mark (see Moorgate Tobacco (No.2) at 434). [7]

    [7] Lomas v Winton Shire Council [2002] FCAFC 413, [39].

    21.     In Woolly Bull Enterprises Pty Ltd v Reynolds (‘Woolly Bull’) Drummond J at first instance stated (emphasis added):

    Further, where such a commitment of the goods has occurred, there will be “an existing intention etc”, sufficient to show use of the mark in Australia where the mark has been used, in advertising in this country their future availability for purchase here, though none of the goods earmarked for export to Australia have yet arrived. Deane J did not say that a subjective intention of the owner of the mark to use the mark in trade at some time in the future was, without more, sufficient to show use of a mark. What he said was that such an intention, if accompanied by objective proofs of that intention in the form of evidence of action by the mark owner to commit goods bearing the mark to actual trade in Australia, would suffice to show use of the mark here at the time in question, though no marked goods had yet been offered for sale in this country.[8]

    [8] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [20].

    22.     The Opponent relies heavily in its written submissions on the case of Buying Systems (Australia) Pty Ltd v Studio SRL[9] (‘Buying Systems’) where the Federal Court found that the Removal Opponent had used the mark through printing business cards, letter heads with the mark and solicited advertisements for magazines it wished to publish.  As noted in Woolly Bull at [29], this was an objectively ascertainable commitment to offering to supply the magazine in trade.  The Opponent’s submissions are that the various preparatory steps taken by the Opponent including the preparation of a software specification and use of the Trade Mark in communications with a software development company are analogous (given the changes in technology) to the steps taken by the removal opponent in Buying Systems. The Opponent submits that although the Opponent’s software was not (at least initially) released under the Trade Mark, what is relevant is that the intention once existed, during the relevant period.  The Opponent asserts that the development of the software specifications displaying the Trade Mark amounts to objective evidence of an intention to use.

    [9] (1995) 30 IPR 517.

    23. I find that the conversations (and e-mails and documents) between the Opponent and Innovent Business Solutions Pty Ltd discussing the development of software under the Trade Mark (including the creation and use of a pen with the Trade Mark placed on it), do not satisfy the requirements under s 100(3) to show use of the Trade Mark in respect of the Registered Services. I do not accept the Opponent’s submission that s 100(3) of the Act is satisfied merely by evidence of an intention to use a trade mark at a particular time in the relevant period. More is required.

    24. In Woolly Bull at [40] the Court made a distinction between merely investigating and planning to use a trade mark and objectively committing to use a trade mark. The former, whatever the subjective intention of the party is, does not amount to use for the purpose of s 100(3) of the Act. While the Opponent may have had a subjective intention, no doubt bona fide, to use the Trade Mark for the Registered Services, the actual steps taken in 2013 go no further then preliminary discussions with a potential supplier for the purpose of developing a software system that may have been (but ultimately was not) released under the Trade Mark.  It had not committed itself to using the Trade Mark; it may have decided not to release the software or it may have decided (as it did) to release the software under a different trade mark.  This circumstance differs from Buying Systems where the steps taken were arms-length approaches to potential customers, which resulted in use of the relevant trade mark after the non-use period.  While the Opponent may have been committed to developing the software and at the time desired that (and thought it would be) it be released under the Trade Mark, this does not amount to an objective commitment to suppling the Registered Services (through the software) under the Trade Mark.  The software did not exist at the time and indeed the software was developed by a third party and released several years later under the brand name ‘Rentify’[10]. 

    [10] I note the Opponent’s submissions that the use of Rentify was as part of a preliminary launch.  This is not relevant; rather the fact that the Opponent was able to launch the service under a different mark is a relevant in considering whether, during the conversations in 2013, the Opponent had objectively committed itself to launching the software under the Trade Mark.

    25.     An additional submission by the Applicant that supports the conclusion that there was no objective commitment to use the Trade Mark for the Registered Services (and hence no use), is that the Opponent gives evidence that the Trade Mark would only be used for the Registered Services if the initial launch of the software under the name ‘Rentify’ was successful.  This amounts to a conditional commitment to using the Trade Mark, not an objective commitment to use the Trade Mark for the Registered Services.

    Obstacles to use

    26. The Opponent does not submit, not does its evidence raise matters which could be regarded as obstacles to use of the Trade Mark in the relevant period, pursuant to s 100(3)(c) of the Act.

    27.     As there is no use of the Trade Mark or obstacles to use, it is therefore necessary to consider whether the Registrar should exercise her discretion and not remove the Trade Mark from the Register.

    Registrar’s Discretion

    28.     As noted in Shanahan’s Australian Law of Trade Marks and Passing Off the policy of the Act is to facilitate the removal of an unused trade mark, and the public interest of the integrity of the Register will generally demand the removal of an unused trade mark.[11] However, as indicated at paragraph 11, above, s 101(3) provides the Registrar with a discretion, which, in the words of Bennett J, is:

    [11] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2016 Thomson Reuters, [70.2505].

    a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court [or Registrar] is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.[12]

    [12] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [167].

    Her Honour also noted:

    By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. …

    There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account.[13]

    [13] Ibid [171]-[172].

1. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated:

   Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[14] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register.[15] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[16]

   [14] Kowa Co Ltd v Organon [2005] FCA 1282, [92].

   [15] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

   [16] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210].

   30.     Factors that have been found relevant to the consideration of whether to exercise the discretion include:

   ·There had been no abandonment of the trade mark;

   ·The registered proprietor of the mark still had a residual reputation in the mark;

   ·There had been sales by the registered proprietor of goods for which removal was sought since the relevant period ended;

   ·The applicant for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark;

   ·The registered proprietor was not aware of the applicant’s sales under the mark.[17]

   [17] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135 at [169] citing E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 1005 [202]-[203].

2. The Trade Mark has never been used in Australia, including after the relevant period has ended.  There is no residual reputation in the Trade Mark among the general public. 

3. The Opponent’s software has been released under the name ‘Rentify’.  While the Opponent states that the decision to release the software under that name was a commercial decision to test the software, I have been provided with no evidence of an intention or steps taken to re-release the software under the Trade Mark.  There has been no use by the Opponent of the Trade Mark since the relevant period ended, indeed such a use would be impossible since the Trade Mark has been assigned to a Third Party.  There is no evidence before me of any inconvenience that would be suffered by the Opponent or Rentify were it to select a different name for its software if and when it chooses to release it; there is no evidence before me of any marketing collateral prepared, expenditure incurred or other steps taken by the Opponent or Rentify Pty Ltd to market the software under the Trade Mark.

4. Equally I have been provided with no evidence of the extent to which the Applicant has a private commercial interest in the removal of the Trade Mark from the Register.

5. While the Opponent may have a limited private commercial interest in maintaining the registration of the Trade Mark, it is insufficient to outweigh the public interest of the integrity of the Register and the lack of any reputation in the Trade Mark in Australia.  In those circumstances I am not prepared to exercise the Registrar’s discretion.

   Decision

   35.     I decide that the Opponent has not established its opposition to removal and the Trade Mark should be removed from the Register in respect of all of the services for which it is registered.

6. Accordingly, I direct that registration 1323071 be removed from the Register one month from the date of this decision.  If the Registrar is served with a notice of appeal before then 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

   37. The Applicant has been successful in relation to the application for removal of the Trade Mark and has requested its costs. I direct that costs in relation to trade mark registration no. 1323071 be awarded against the Opponent in accordance with Schedule 8 of the Trade Marks Regulations 1995.

   Nicholas Smith
   Hearing Officer
   Hearings and Oppositions
   13 March 2018