Monecor (London) Limited v TTT Moneycorp Limited

[2018] ATMO 134

TRADEMARKSACT 1995

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

Re:Opposition by TTT Moneycorp Limited to application under section 92 of the Act by Monecor (London) Limited to remove trade mark number 776186 (36) - MONEYCORP - in the name of TTT Moneycorp Limited

DELEGATE:

Iain Campbell Thompson

REPRESENTATION:

Opponent: McCullough Robertson Lawyers – written submissions Applicant: Duncan Cotterill Lawyers

DECISION:

2018 ATMO 134

Trade MarksAct1995

Opposition under section 96 to application under section 92(4)(b) - Trade Mark used during relevant period – opposition to removal established.

Background

1. In these proceedings Monecor (London) Limited (‘the Applicant’) has applied under section 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) for the removal of the trade mark which appears below for all of the services for which it is registered from the register of trade marks:

Registration No:         776186

Priority Date:             21 October 1998

Services:  Class 36: Banking services and foreign currency services Trade Mark:  MONEYCORP

(‘the Trade Mark’)

1. As allowed by section 96 of the Act, the owner of the Trade Mark, TTT Moneycorp Limited, (‘the Opponent’) has opposed the application.

1. The history of the matter appears below:

16 August 2016 – Application for Removal of a Trade Mark from the Register for Non-Use;

25 October 2016 – Notice of Intention to Oppose the Removal of a Trade Mark from the Register for Non-Use;

25 November 2016 – Statement of Grounds and Particulars; 15 February 2017 – Notice of Intention to Defend;

19 May 2017 – Evidence in Support of the Opposition to Removal; 27 November 2017 – Opponent’s submissions filed.

1. Both parties have been informed of their right to be heard or to make written submissions. The matter has now been passed to me, a delegate of the Registrar of Trade Marks, for my decision on the written record which is comprised of those materials mentioned in the foregoing paragraphs.

Principles

1. As the application for removal was filed by the Applicant on 16 August 2016, the relevant period during which (in order to establish its opposition) the Opponent must show use of the Trade Mark is the three year period ending on 16 July 2016. Evidence of use which is from either before or after1 that  three year period (‘the Relevant Period’) will  not establish the Opponent’s opposition to the removal of the Trade Mark.

1. Concerning the onus in these proceedings, section 100 of the Act relevantly provides:

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.

1. A single bona fide use of a trade mark in the Relevant Period may be sufficient to answer an application for removal under subsection 92(4)(b): Woolly Bull Enterprises Pty Ltd v Reynolds.2

2. However, where a trade mark owner relies on only one, or a few, instances of alleged use, such acts ought to be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’: Nodoz Trade Mark (‘Nodoz’).3

1 I note that in some circumstances in which the opposition to removal has not been established by reason of use in the relevant period, the use of a trade mark after the relevant period can be a relevant factor considered by the Registrar when exercising her discretion under section 101 of the Act to leave a trade mark registered for some or all of the goods in respect of which removal had been sought.

2 [2001] FCA 261; 107 FCR 166 at 172.

1. The decision maker may not be persuaded by evidence that is solely from the internal files of the opponent (Nodoz), or of a circumstantial nature: Trina Trade Mark. 4

2. The relevant standard of proof that the Opponent bears is on the balance of probabilities.5 In this regard, section 101 of the Act provides that if ‘the Registrar is satisfied that the grounds on which the application [for removal] was made have been established, the Registrar may decide to remove the trade mark from the Register …’ [Stress added]

3. In Blount Inc v Registrar of Trade Marks6 Branson J observed:

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.

1. It follows that unless the Opponent evidences ‘convincing proof’ of use of the Trade Mark, without alterations or additions which substantially affect its identity,7 during the Relevant Period, in relation to the services in respect of which it is registered to the satisfaction of the Registrar, the opposition to removal will not be established.

1. Even if the Trade Mark has not been used and the ground for removal has not been established, there remains a discretion for the Registrar to allow the Trade Mark to remain on the Register in respect of the impugned services if satisfied it is reasonable to do so. The Opponent again bears the onus of providing reasons as to why the Trade Mark should remain on the Register.

Evidence

1. The Evidence in Support is a declaration by Matthew David Cook, Head of Legal of the Opponent, made on 18 May 2017, with exhibits 1 to 15.

1. In brief, Mr Cook’s declaration establishes that the Trade Mark was first used in Australia in 1998 and that it was used during the Relevant Period in relation to the services in

3 [1962] RPC 1 at 7 per Wilberforce J.

4 [1977] RPC 131.
5 Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599.
6 [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37-241.

7 Subsections 7(1) and 100(3)(b)(i) of the Act apply.

respect of which it is registered. Mr Cook provides corroborating examples of the use of the Trade Mark from within that time evidencing financial transactions undertaken by the Opponent on behalf of clients. Further, there is neither evidence nor submissions from the Applicant which challenge the substance of Mr Cook’s declaration.

1. The Opponent’s opposition to the application for removal is thus well-founded.

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 Opponent has established that the Trade Mark was used during the Relevant Period in Australia; I am not, therefore, satisfied that the ground on which the application was made has been established.

1. It is therefore appropriate that the Trade Mark remains registered.

Costs

1. The Opponent has requested its costs and as it has been the successful party it is appropriate, in terms of section 221 of the Act, that I award costs against the Applicant at the official scale set out at Schedule 8 to the Trade Marks Regulations 1995.

Iain Campbell Thompson Hearing Officer

Trade Marks Hearings 24 August 2018