Nelson Conglomerate Pty Ltd v Cairns and Hinterland Hospital and Health Service

[2020] ATMO 35

TRADE MARKS ACT 1995

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

ReOpposition by Nelson Conglomerate Pty Ltd to application by Cairns and Hinterland Hospital and Health Service for removal of trade mark 1248997 (9) – RIVER INTELLIGENCE (figurative) - in the name of Nelson Conglomerate Pty Ltd

Delegate:                 Robert Wilson

Representation:       Opponent: Self-represented

Applicant: Jürgen Bebber of Corrs Chambers Westgarth

Decision:                   2020 ATMO 35

Trade Marks Act 1995 (Cth) - Section 96 opposition: opposition to application for removal pursuant to s 92(4)(b) unsuccessful– evidence insufficient to establish use during relevant period – trade mark to be removed from Register

Background

1. Nelson Conglomerate Pty Ltd (‘the Opponent’) is the registered owner of trade mark registration 1248997, relevant details of which are as follows:

Trade Mark Number:

1248997

Filing Date:

30 June 2008

Goods:

Class 9: Global media player/centre, GPS, digital TV, camera, touch screen; apparatus for WIFI, telecommunications, computing, projection, games, data storage, music/video, entertainment

(‘the Challenged Goods’)

Trade Mark:

(‘the Challenged Trade Mark’)

1. On 13 July 2018, Cairns and Hinterland Hospital and Health Service (‘the Removal Applicant’) filed an application (‘the Application’) based on s 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) seeking removal of the Challenged Trade Mark from the Register in respect of all of the Challenged Goods. The Removal Applicant asserts that the Challenged Trade Mark was not used in good faith in relation to any of the Challenged Goods during the three year period ending on 13 June 2018 (‘the Relevant Period’).

2. The Opponent filed a Notice of Opposition consisting of a Notice of Intention to Oppose which was filed on 17 August 2018 and a Statement of Grounds and Particulars which was filed on 7 September 2018. The Removal Applicant filed a Notice of Intention to Defend on 18 October 2018.

   Evidence

3. Following the granting of an extension of time, the Opponent filed the following evidence in support of its Opposition (‘EIS’):

   ·Declaration made on 19 March 2019 by George Nelson (‘the Nelson declaration’). Along with the declaration three photographic images were filed (‘the Filed Images’).

4. The Removal Applicant did not file any evidence.

   Hearing requested

5. Once the time allowed for filing evidence had ended both parties requested to be heard. The matter was set down for hearing on 4 March 2020. I was appointed as a delegate of the Registrar of Trade Marks to decide the matter. Following usual practice, on 14 January 2020 I provided the parties with a timetable for the filing of submissions. The Opponent’s submissions were due on 19 February 2020. The Removal Applicant’s submissions were due on 26 February 2020.

   Late evidence

6. On 15 February 2020 the Opponent filed three documents, being three photographic images (‘the Late Images’). The images were not accompanied by any correspondence. It was assumed that this was an attempt by the Opponent to file late evidence. On 17 February 2020, I sent correspondence to the Opponent explaining that the period for filing evidence was over and that should it wish the documents to be considered as part of the evidence it must provide very good reasons and (if appropriate) supporting evidence as to why the Late Images should be considered at this late stage. I referred the Opponent to regs 21.15 and 21.19 of the Trade Marks Regulations 1995 and to some relevant case law. The Opponent did not provide any such reasons. This interaction was somewhat academic as the Late Images appear to be identical to the Filed Images.

   Submissions filed

7. The parties filed written submissions in accordance with my earlier directions. The Opponent’s submissions were prepared by George Nelson. The Removal Applicant’s submissions were prepared by Jürgen Bebber of Corrs Chambers Westgarth.

8. I heard the matter as scheduled on 4 March 2020. George Nelson appeared on behalf of the Opponent. Jürgen Bebber appeared for the Removal Applicant. The hearing was conducted by teleconference.

   Legal Framework

9. Part 9 of the Act 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.

10. The removal 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.

11. 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 Challenged Trade Mark;[1] I confirm that that period has passed.

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

12. Sections 100(1)(c) and 100(3) of the Act indicate that the Opponent bears the onus of rebutting the allegation made under s 92(4)(b), either by establishing that the Challenged 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.

13. Section 101(1) provides the Registrar with the discretion to remove the Challenged Trade Mark from the Register ‘in respect of any or all of the goods … to which the [removal] application relates’. Section 101(3) explicitly provides that the Registrar has the discretion not to remove the impugned 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

    The Opponent’s assertion of use

14. The Nelson declaration consists of a single page of seven paragraphs. Paragraph 7 consists of two sub-paragraphs. Paragraph 7 is the only part of the declaration which addresses use of the trade mark. The preceding six paragraphs are concerned with the abovementioned extension of time to file the EIS. Paragraph 7 is reproduced in its entirety here:

    7. My evidence is;

    7.1 that I have for years now promoted [the Challenged Trade Mark] and its methodology as part of our service provision (including use of a product bearing the mark) for a number of years as is evidence on the website.

    7.2 Rely on the continued trademark protection to earn a living as a consultant as it is a critical part of our products and service offering.

15. The Opponent’s written submissions include the following:

    The marks use (sic)

    ·The mark was integrated into a previous product; the GMC (Global Media Centre) in two models which offers a tablet function, mobile telephony, radio, TV, Microsoft Quite of software, GPRS and GPS functionality;

    ·The mark is currently being utilised on an associated website and associated consultant products;

    ·The mark is currently and continually being applied to new technologies and products to determine suitability of the mark for certain industries, technologies and products; and

    ·To achieve the above, Nelson Conglomerate engage with third parties to assess compatibility and interest from third parties to incorporate the mark with their products etc. (i.e. holding out).

    Good faith

    Nelson Conglomerate has always and will always continue to be willing to enter reasonable negotiations with any and all parties interested in using our mark, that is, to authorise the use of the mark and/or to assign the mark to a body corporate for use of the mark within Australia. Negotiations on the use, licensing, authorising and assigning of our mark was previously undertaken with [the Removal Applicant] and as a result of no agreement between the parties, an application for removal has been filed.

16. The statements which appear above are in the nature of evidence rather than submissions. Such statements belong in a declaration filed as part of the EIS. When such statements appear as part of a declaration they need to be supported by cogent evidence to support them. In general, bald statements without supporting evidence carry very little weight. These statements do not assist the Opponent.

    Assessment of the EIS

17. The Filed Images consist of two photographs, from different angles, of packaging (a box) of a ‘Portable Espresso Machine’. The third photograph is of the espresso machine removed from its packaging. The photographs are undated and the Challenged Trade Mark is not apparent in any of the photographs. These photographs do not assist the Opponent.

18. Other than the Filed Images, the Opponent’s rebuttal of the allegation of non-use rests on the website referred to in para 7.1 of the Nelson declaration. As is apparent from the above discussion, there are no examples of the website provided in the EIS. It is usual where a website is referred to in evidence that dated examples of relevant pages are provided to support claims of use of a trade mark on a website. Such dated examples are typically taken from an internet archive such as Wayback Machine. The Opponent has here, instead, chosen to simply provide a link to a website. For the sake of clarity, it is not the role of a Hearing Officer to make their own enquiries as to the veracity of statements made by an opponent. Nor is it for an applicant to prove that an opponent did not use a challenged trade mark. The burden of proof falls squarely on the shoulders of an opponent.

19. There is no statement in the Nelson declaration as to how often and where the Challenged Trade Mark appears on the website. However, one example is to be found on a page under the heading Design Strategy. The Opponent pointed out in oral submissions that the website bears the copyright notice shown below, and relies upon that notice to support a view that the appearance of the Challenged Trade Mark on the website if viewed today means that it should be accepted that the trade mark also appeared on the website during the Relevant Period:

    Copyright © 2011-2020

20. A copyright notice, such as that which appears above, is not a sufficient means of dating the content of a website. Websites are typically subject to regular changes and it is to be expected that the content on a website today is different than it was two years ago, and that is, again, very different to what it was ten years ago. Consequently, the appearance of the Challenged Trade Mark on the website today does not assist the Opponent.

21. The EIS has fallen well short of demonstrating that the Opponent used the Challenged Trade Mark during the Relevant Period. The grounds on which the Applicant was made have, therefore, been established.

    The Registrar’s Discretion  

22. 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].

23. 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.)

24. The Removal Applicant submitted the following in respect of the discretion:

    We submit that there are no circumstances in the present case which would warrant the exercise of the discretion in [the Opponent’s] favour.

    Based on the evidence available, [the Opponent] has not used [the Challenged Trade Mark] in the Relevant Period in relation to [the Challenged Goods]. …

25. There is nothing in the evidence which satisfies me that it is reasonable to exercise the discretion in favour of the Opponent.

    Decision

26. As the Opponent has not rebutted the allegation of non-use, the ground for removal has been established. I decide therefore that Challenged Trade Mark be removed from the Register after one month from the date of this decision for all of the Challenged Goods. In the event of an appeal from this decision, the Challenged Trade Mark will not be removed from the Register until the appeal has been discontinued or dismissed, or in the event of a decision from the court, the registration will be subject to that decision.

    Costs

27. The Removal Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent under s 221 of the Act in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.

    Robert Wilson
    Hearing Officer
    Oppositions and Hearings
    6 March 2020