MySchool Pty Ltd v Rossi Brothers Pty Ltd

[2020] ATMO 63

TRADE MARKS ACT 1995

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

ReOpposition by MySchool Pty Ltd to application by Rossi Brothers Pty Ltd for removal of trade mark 1372122 (36, 38, 42) – MYSCHOOL - in the name of MySchool Pty Ltd

Delegate:                 Robert Wilson

Representation:       Opponent: Franke Hyland Pty Ltd

Applicant: Wrays Pty Ltd

Decision:                   2020 ATMO 63

Trade Marks Act 1995 (Cth) - Section 96 opposition: opposition to application for removal pursuant to s 92(4)(b) partially successful – use during relevant period established for some services – trade mark to remain on Register for some services only

Background

1. MySchool Pty Ltd (‘the Opponent’) is the registered owner of trade mark registration 1372122, relevant details of which are as follows:

Trade Mark Number:	1372122
Filing Date:	14 July 2010
Services:	Class 36: Fund raising services; provision of information relating to fund raising for schools; financial services Class 38: Communications services; electronic transmission of data, images, documents and other content via computer networks for the Internet; providing online electronic bulletin boards and chat rooms for transmission of messages among computer users; providing online computer network facilities for real-time interaction and communication with other computer users; electronic mail services Class 42: Hosting a website or weblog providing an environment for user generated content (‘the Opponent’s Services’)
Trade Mark:	MYSCHOOL	(‘the Trade Mark’)

2. Any references to parts, sections or regulations, below, are references to parts, sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively, unless otherwise indicated.

3. On 15 November 2017, Rossi Brothers Pty Ltd (‘the Removal Applicant’) filed an application (‘the Application’) based on s 92(4)(b) seeking removal of the Trade Mark from the Register. The Application alleged that the Trade Mark was not used in good faith in relation to any of the Opponent’s Services during the three year period ending on 15 October 2017 (‘the Relevant Period’). The Opponent filed a Notice of Opposition consisting of a Notice of Intention to Oppose, which was filed on 19 January 2018, and a Statement of Grounds and Particulars (‘SGP’), which was filed on 16 February 2018. The Removal Applicant filed a Notice of Intention to Defend on 20 March 2018.

Evidence

4. The Opponent filed Evidence in Support of its opposition being a Statutory Declaration made on 26 June 2018 by Adam Hyland, Registered Patent and Trade Mark Attorney and Principal of Franke Hyland Pty Ltd the representative of the Opponent, with Exhibits AH-1 to AH-6 (‘the Hyland declaration’).

5. The Removal Applicant did not file any evidence.

Hearing not requested, decision on written record

6. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. Neither party requested to be heard. The Opponent filed written submissions which were prepared by its representative, Franke Hyland Pty Ltd. The Removal Applicant filed written submissions which were prepared by its representative, Wrays Pty Ltd.

7. As a delegate of the Registrar of Trade Marks I have been charged with the responsibility of deciding the matter on the materials discussed in the preceding paragraphs.

Legal Framework

8. Part 9 governs the removal of trade marks from the Register for non‑use. The sections of Part 9 which are most relevant to the case in hand are ss 92, 96, 100 and 101.

9. The Application specified that it was made according to the provisions of s 92(4)(b). Section 92 relevantly provides:

Section 92.  Application for removal of trade mark from Register etc

(1)  … a person may apply to the Registrar to have a trade mark that is … 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.

…

(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.

1. 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 application to register the Trade Mark.[1] I confirm that that period has passed.

   [1] As per s 93(2) of the Trade Marks Act 1995 prior to the amendments made to the Act as a result of the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) as applies in the present matter.

2. Sections 100(1)(c) and 100(3) indicate that the Opponent bears the onus of rebutting the allegation made under s 92(4)(b), either by establishing that the Trade Mark was used in good faith in Australia during the Relevant Period, or that there was a relevant obstacle to use. I proceed on the basis that the standard of proof required is ‘on the balance of probabilities’.[2]

   [2] Following Gyles J’s approach in Pfizer Products Inc v Karam (2006) 70 IPR 599 with respect to oppositions under s 52 of the Act. See also the recent decision of the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [132]-[133] affirming Gyles J’s approach.

3. Section 101(1) provides the Registrar with the discretion to remove the Trade Mark from the Register ‘in respect of any or all of the goods and/or services to which the [removal] application relates’. Section 101(3) explicitly provides that the Registrar has the discretion not to remove the Trade Mark (if the Registrar is satisfied that it is reasonable to do so), even if the grounds on which the Application was made have been established.

Discussion

1. To successfully oppose the Application the Opponent must establish that it, as the owner of the Trade Mark, has used the Trade Mark in the course of trade in respect of all the Opponent’s Services, in good faith, during the Relevant Period.

Use in connection with the Opponent’s Services

1. The Hyland declaration states that the Opponent used the Trade Mark ‘since at least 2004 via their website at which is the main platform of their business’. The Removal Applicant submitted:

   [F]or the reasons discussed below … the Opponent has failed to demonstrate use of the Trade Mark in the course of trade for all services as claimed in Classes 36 and 38 during the relevant period so as to discharge the onus on it to show bona fide use. …

1. Because of the way the Hyland declaration is worded, it is useful to break this discussion down into a separate consideration of each the classes in the Opponent’s Services. However, given the above submission from the Removal Applicant and the absence of submissions by the Removal Applicant in respect of Class 42, that class will not be considered beyond a simple finding here that I am satisfied on the evidence before me that the Opponent has established use in respect of the Class 42 services.

Class 36

1. The Opponent’s Class 36 services are listed again here for ease of reference:

   Class 36: Fund raising services; provision of information relating to fund raising for schools; financial services

2. The parties are in general agreement of the meaning of fundraising services. The Removal Applicant provided the following definition which I will adopt here:

   Fundraising services are ordinarily defined to include planning, implementing and managing fundraising initiatives that plan to raise funds or seek financial support for a charity, cause or other enterprise.

3. The Removal Applicant submitted:

   Financial services would ordinarily include economic services provided by the finance industry, which encompasses a broad range of businesses that manage money, including credit unions, banks, credit card companies, insurance companies, accountancy companies, consumer finance corporations, stock brokerages and investment funds.

I largely concur with the above with the possible exception of ‘insurance companies’. Nothing turns on it in this decision, but my understanding is that insurance services would not normally be considered a subset of financial services.

1. Exhibit AH-2 to the Hyland declaration is declared to be ‘a set of captured webpages’ from the Opponent’s website obtained from an internet archive service. The exhibit, in fact, shows only a single page from the website. That page is dated within the Relevant Period and purports to show that the Opponent ‘offered each of the services listed under class 36 … at that date’. The page bears the Trade Mark. The heading ‘Fundraising’ appears on the page, beneath which appears information about fundraising in connection with schools. A number of links appear below the information, none of which appears (or are asserted) to take a person to another part of the Opponent’s website or to another website run by the Opponent. Exhibit AH-5 is declared similarly to AH-2 but from a different date in the Relevant Period. The exhibit shows the same page provided in AH-2 but is dated some 18 months earlier. Nowhere on the page are there any services offered. At best, Exhibits AH‑2 and AH‑5 demonstrate only provision of information relating to fund raising for schools.

2. Exhibit AH-6 is declared to be:

   a copy of an email sent by David Walkerden, managing director of [the Opponent], in March 2015 displaying the trade mark. This illustrates the way in which the trade mark has been used in all email correspondence relating to [the Opponent’s] business.

The Opponent submitted that:

[T]his email is an example of the way the trade mark was used in email communications relating to all and any correspondence sent by the Opponent during the Relevant Period, regardless of the services that were offered via such communication.

The email is not asserted to, and does not, demonstrate use of the Trade Mark in connection with any of the Opponent’s Services. This exhibit does not assist the Opponent.

1. Of the Class 36 services the Opponent has established use of the Trade Mark only in connection with provision of information relating to fund raising for schools. Given the breadth of services covered by the terms fund raising services and financial services the narrow use demonstrated is insufficient to rebut an allegation on non-use use in connection with either of those broader services.

Class 38

1. The Opponent’s Class 38 services are listed again here for ease of reference:

   Class 38: Communications services; electronic transmission of data, images, documents and other content via computer networks for the Internet; providing online electronic bulletin boards and chat rooms for transmission of messages among computer users; providing online computer network facilities for real-time interaction and communication with other computer users; electronic mail services

2. Exhibit AH-1 is declared to be ‘a set of captured webpages’ from the Opponent’s website which were obtained from an archiving service. The exhibit consists of a single page dated within the Relevant Period. The exhibit is purported to show that the Opponent ‘offered each of the services listed under class 38’. The Trade Mark appears on the page. The page has a heading ‘Forum’ below which appear posts about various schools around Australia and, in one instance, a person offering second hand school uniforms for sale. Exhibit AH-4 is declared similarly. The exhibit consists of two pages from the Opponent’s website captured during the Relevant Period. The Trade Mark appears on both pages. The first of the pages has the heading ‘Breaking News’ below which appears a single article regarding an Australian Government review of the Australian Curriculum. The second page is a ‘Forum’ page similar to that which appears in AH-1.

3. The Removal Applicant conceded that:

   [T]his evidence may show use of the Trade Mark in relation to certain services in Class 38, namely, providing online electronic bulletin boards and chat rooms for transmission of messages among computer users; providing online network facilities for real-time interaction and communication with other computer users.

At best, AH-1 and AH-4 demonstrate use of the Trade Mark in connection with those services only.

Conclusion on use

1. The Opponent has established use in connection only with certain of the services for which it is registered, being:

   Class 36: Provision of information relating to fund raising for schools.
   Class 38: Providing online electronic bulletin boards and chat rooms for transmission of messages among computer users; providing online network facilities for real-time interaction and communication with other computer users.
   Class 42: Hosting a website or weblog providing an environment for user generated content.

Obstacle to use

1. The Opponent has not claimed there was any obstacle to its use of the Trade Mark in respect of any of the Opponent’s Services.

The Registrar’s discretion 

1. Section 101(3) provides the Registrar with a discretion, which, in the words of Bennett J, 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 [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.[3]

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.[4]

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

[4] Ibid [171]-[172].

1. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited,[5] Flick J stated:

   Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[6] 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.[7] 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.[8]

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

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

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

   [8] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210]. (Note that Flick J’s decision was overturned on appeal to the Full Federal Court, although not on this point.)

2. The Opponent has requested that the Registrar exercise her discretion in favour of the Opponent. There is nothing in the evidence that shows that the Opponent intends to use, or has ever used, the Trade Mark in connection with services beyond those for which it has established use. Further, there is nothing before me which satisfies me that it is appropriate to leave the Opponent’s Services unamended. I therefore decline to exercise the discretion available to the Registrar.

Decision

1. The Removal Applicant has been somewhat successful in its application. The Opponent’s Services are to be amended to remove all but the services listed in paragraph 25, above.

Costs

1. The Removal Applicant and the Opponent have each had a measure of success in this matter; consequently, I decline to make an award of costs against either party.

Robert Wilson
Hearing Officer
Delegate of the Registrar of Trade Marks
23 April 2020