MynSmart Pty Ltd v Zora Tech Pty Ltd - [2019] ATMO 53

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by MynSmart Pty Ltd to application under section 92 of the Act by Zora Tech Pty Ltd to remove trade mark number 1367529 (35, 41, 42) - myn (fancy) - in the name of MynSmart Pty Ltd

Delegate:

Iain Campbell Thompson

Representation:

Opponent: self-represented

Applicant: Adam Law Patent & Trade Mark Attorneys

Decision:

2019 ATMO 53

Trade Marks Act 1995

s96 opposition to application under section 92 - opposition to removal partially established. Services restricted.

Background
1.     In these proceedings under the Trade Marks Act 1995 (‘the Act’) Zora Tech Pty Ltd (‘the Applicant’) applied on 12 August 2016 under the provisions of section 92(4)(b) for the removal of the trade mark which appears below in respect of all of the services for which it is registered:
Registration No:              1367529
Priority Date:  18 June 2010
Goods/Services:              Class 35: Provision of advice for improving business operation
Class 41: Vocational training, provision of training workshops, industrial training, training for mine workers, training of mining equipment operators, practical training (demonstration), dragline operator training, training from remote locations via telecommunications, training people to use software, training services in relation to facilitating team building, training of management, training of mining operation management
Class 42: Help desk services, help desk services for mine operators, provision of advice and support to businesses from remote locations, all of the preceding being technological advisory services; provision of technical advice to businesses, provision of technical advice to mine operators, technical consulting including technical consulting for mine operators, provision of help desks being technological advisory services
(‘the Services’)

Trade Mark:
(‘the Trade Mark’)

2. As provided for by section 96 of the Act, the owner of the Trade Mark, MynSmart Pty Ltd (‘the Opponent’) filed Notice of Intention to Oppose the application on 25 October 2016.
3.     On 25 November 2016, the Opponent filed a Statement of Grounds and Particulars (with attachments) which, in brief, asserts relevant use of the Trade Mark by the Opponent.
4.     On 16 April 2017, the Applicant filed a Notice of Intention to Defend.
5.     On 20 September 2017 the Opponent filed its Evidence in Support of the Opposition being a declaration by Trent Brian MacDonald, Managing Director of the Opponent, made on 20 September 2017, with attachments.
6.     The Applicant has not filed Evidence in Answer.
7.     Both parties have been informed of their right to request a hearing or to make written submissions. Neither party requested to be heard. Only the Applicant has filed written submissions, those being prepared by its attorneys, Adam Law Patent & Trade Mark Attorneys.

Now, in order that the Registrar may decide the matter, it has been passed to me, one of her delegates, for my decision on the written record which is comprised of those materials mentioned in the foregoing paragraphs.
Principles
As the application to remove the…

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 53
Decision Date: 8 April 2019

CaseChat Overview and Summary

This matter concerned an application by MynSmart Pty Ltd (the Applicant) to remove a trade mark from the Register, opposed by Zora Tech Pty Ltd (the Opponent). The dispute arose from the Opponent's alleged non-use of its trade mark in relation to certain services. The Applicant contended that the Opponent had not demonstrated use of the trade mark during the relevant period as required by section 92(4)(b) of the relevant Act.

The primary legal issue before the Hearing Officer was whether the Opponent had established use of the trade mark in Australia in good faith in relation to the services for which it was registered, or whether grounds for removal under section 92(4)(b) had been made out. A secondary issue was the exercise of the Registrar's discretion under section 101(3) of the Act to allow the trade mark to remain on the Register, even if grounds for removal were established, if it was considered reasonable to do so.

The Hearing Officer noted that the Opponent's evidence, primarily consisting of training materials, did not provide a clear narrative of the trade mark's use, market, or clients. While some use could be inferred from copyright dates on annexed materials, the Opponent failed to provide copies of licenses or corroborative evidence for its assertion of licensing the trade mark. The Hearing Officer found that the Opponent provided training services to mining companies in the safe operation of equipment, particularly dragline operators, during the relevant period, but had not shown use beyond these services. The Applicant had not filed evidence. The Hearing Officer considered the discretion under section 101(3) and noted that factors such as abandonment, residual reputation, and the conduct of the parties are relevant, but found that neither party had provided evidence to assist in the exercise of this discretion.

The Hearing Officer determined that the grounds for removal had not been sufficiently established to warrant removal, but found it appropriate to restrict the services for which the trade mark was registered. The Hearing Officer directed that, unless a notice of appeal was served within one month, the services be amended to specify "Provision of advice for improving the operation of mining equipment" under Class 35, and various vocational and industrial training services related to mining equipment operation under Class 41, and technological advisory services related to the operation of mining equipment under Class 42. If an appeal was filed, the disposition would be in accordance with the court's order.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

Even if the Trade Mark has not been used and opposition to 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 Services if satisfied it is reasonable to do so.The EvidenceThe Opponent18. Mr MacDonald’s declaration does not contain any narrative about the Trade Mark – for example, when the Opponent’s use of it started, what the market is for the Services provided under the Trade Mark, what the services actually are, who the clients are, or invoices dated from during the Relevant Period showing the Trade Mark. What can be inferred about the Opponent’s use of the Trade Mark derives from various attachments to the declaration which are, in the main, training materials which bear copyright claims dated from within the Relevant Period. Whilst Mr MacDonald asserts the grant of licenses to the Trade Mark to “various businesses” he does provide copies of these licenses, or state who these businesses are, or what these businesses do, or provide corroborative material which supports the assertion.19. That said, the Opponent, I gather from the material annexed to Mr MacDonald’s declaration, provides training services to mining companies in the safe operation of equipment, in particular to dragline operators. While it is clear that such services have been offered during the Relevant Period, the Opponent has not shown that its use of the Trade Mark (or use by any licensees) has extended beyond such services.The Applicant20. As the Applicant has not filed evidence, there is no information about it before the Registrar.Section 92(4)(b) 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:[…](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.22. The Applicant submits that the uses of the Trade Mark shown by the Opponent are not uses of the Trade Mark without alterations or additions which do not affect its identity. An example of such use appears below:(‘the As Used Trade Mark’)

Decision

Reasons for decision

In Pioneer Computers Australia Pty Ltd v Pioneer KK Bennett J observed:[11][11] [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354 at [167].The discretion under s 101(3) is 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 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.In Kowa Company at [98], Lander J rejected the submission that a party seeking the exercise of the discretion needs to show “exceptional circumstances”. In E & J Gallo at [198], Flick J agreed with Lander J that there is no requirement to establish exceptional circumstances. With respect, I also agree with Lander J that there is no warrant to read a requirement for exceptional circumstances into s 101(3). In E & J Gallo at [202]-[203], Flick J stated that the following factors set out by Falconer J in Hermes Trade Mark [1982] RPC 425 were of assistance in considering the exercise of the discretion : ·there had been no abandonment of the trade mark;·the registered proprietors of the mark still had a residual reputation in the mark;·there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;·the applicants 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 proprietors were not aware of the applicant’s sales under the mark.32. Neither the Applicant nor the Opponent has filed evidence which might be argued to go to the exercise of the Registrar’s discretion. Consequently, I am not satisfied that it appropriate to exercise the Registrar’s discretion in favour of the Opponent.Decision33. Section 101 of the Act relevantly 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.34. The Applicant submits that, should I determine that the Trade Mark was used by the Opponent during the Relevant Period, I should restrict the Services to those relating to dragline operations. However, I consider that the following restriction is appropriate:Class 35: Provision of advice for improving the operation of mining equipment.Class 41: Vocational training, provision of training workshops, industrial training, training for mine workers, training of mining equipment operators, practical training (demonstration), dragline operator training, training from remote locations via telecommunications, training people to use software, training services in relation to facilitating team building, training of management, training of mining operation management; all of the foregoing being limited to training in the operation of mining equipment.Class 42: Help desk services, help desk services for mine operators, provision of advice and support to businesses from remote locations, all of the preceding being technological advisory services; provision of technical advice to businesses, provision of technical advice to mine operators, technical consulting including technical consulting for mine operators, provision of help desks being technological advisory services; all of the foregoing being limited to technical advisory services in the operation of mining equipment.35. I therefore direct that, should the Registrar not be served with a notice of appeal within one month of the date of this decision, the Services be amended to those in the preceding paragraph. If the Registrar is notified of an appeal against this decision within one month of the date of this decision, the disposition of the matter should be in accordance with the court’s order or direction.Iain Campbell ThompsonHearing OfficerTrade Marks Hearings8 April 2019

Ratio Decidendi

Legal Principle Established

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