MynSmart Pty Ltd v Zora Tech Pty Ltd

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 Trade Mark from the Register was filed on 12 August 2016, the Relevant Period for the purposes of section 92(4)(b) of the Act is the three year period ending on 12 July 2016.
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:
(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; or
(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.
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.[1]
[1] [2001] FCA 261; 107 FCR 166 at 172.
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’).[2]
[2] [1962] RPC 1 at 7 per Wilberforce J.
The decision maker may not be persuaded by evidence that is solely from the internal files of an opponent (Nodoz), or of a circumstantial nature: Trina Trade Mark. [3]
[3] [1977] RPC 131.
The relevant standard of proof that the Opponent bears is on the balance of probabilities.[4] 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]
[4] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599.
In Blount Inc v Registrar of Trade Marks Branson J observed:[5]
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.
[5] [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37-241.
It follows that unless the Opponent evidences “convincing proof” of use, or authorised use, of the Trade Mark “in the course of trade”:[6]
1.Without alterations or additions which substantially affect its identity;[7]
2.during the Relevant Period;
3.in relation to the Services;
to the satisfaction of the Registrar, the opposition to removal will not be established.
[6] See section 17 of the Act: What is a trade mark?
[7] Subsections 7(1) and 100(3)(b)(i) of the Act apply.
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 Evidence
The Opponent
18.   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 Applicant
20.   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’)
Section 7 of the Act provides:
7Use of trade mark
(1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
Note:For prescribed court see section 190.
I consider that the use of the Trade Mark with the small-print word “Smart” below it is, in terms of subsection 7(1) of the Act, a use of the Trade Mark without additions or alterations which do not substantially affect its identity: Optical 88 Ltd v Optical 88 Pty Ltd (No 2)[8] (‘Optical’) and Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd[9] (‘Shell’).
[8] [2010] FCA 1380; (2010) 275 ALR 526; (2010) 89 IPR 457 at [256].
[9] [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 1B IPR 523; 35 ALJR 355 at [12].
In Optical Yates J said:
Is the modified ‘707 mark a use of the ‘707 mark with additions or alterations not substantially affecting its identity? In order for that question to be answered affirmatively it is necessary to find that a total impression of similarity emerges from a comparison between the two marks: Carnival[10] at 391; Shell at 414.
[10] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495; (1994) 31 IPR 375; [1994] AIPC 91-049
And in Shell Windeyer J stated:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered.
27.   In my consideration, the word “smart” which appears in the As Used Trade Mark is very small and does not affect the identity of the Trade Mark as registered because a total impression of resemblance emerges from a comparison of the Trade Mark with the As Used Trade Mark.
28.   The Opponent’s use of the As Used Trade Mark is therefore a use of the Trade Mark.
29.   It follows that the Opponent has established its opposition to the application for removal only as far as services directly related to services provided to mining companies in the safe operation of equipment, in particular to dragline operators.
Discretion
30. Section 101 of the Act relevantly provides:
101Determination of opposed application—general
[…]
(3)If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.
(4)Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:
(a)similar goods or closely related services; or
(b)similar services or closely related goods;
to those to which the application relates.
Note 1:If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).
Note 2:For registered owner see section 6.
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.
Decision
33. 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 Thompson
Hearing Officer
Trade Marks Hearings
8 April 2019

[2019] ATMO 53

8 April 2019

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