Nori Investments Pty Ltd v Nano Home Loans Pty Ltd

[2023] ATMO 125

TRADE MARKS ACT 1995

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

Re:Opposition by Nori Investments Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Nano Home Loans Pty Ltd to remove trade mark number 1847514 (35, 36, 37, 42) - How-Nano - in the name of Nori Investments Pty Ltd

Delegate:

Louise Tuohy

Representation:

Removal Opponent: not represented

Removal Applicant: not represented

Decision:

2023 ATMO 125

Trade Marks Act 1995 (Cth) – application under section 92 – section 92(4)(b) application for partial removal – no use established – discretion not exercised – services removed

Background

1. Nori Investments Pty Ltd (‘Removal Opponent’) is the registered owner of the following trade mark (‘Registration’):

   Registration Number:  1847514

   Trade Mark:  How-Nano (‘Trade Mark’)

   Filing Date:  25 May 2017

   Specification:  Class 35: Advertising, publicity, promotion and marketing services namely the marketing of homes and residential developments including by way of display homes; business and business information services in this class in respect of building and construction; the provision of these services by way of the global communications network; contracting and sub-contracting of building services

   Class 36: Mortgage broking and associated referral services; real estate services including the sale of land and buildings including housing, strata units and townhouses and commercial properties; real estate agencies; real estate leasing; real estate appraisal; real estate brokers; real estate management; real estate development namely leasing or sale of real estate developments; providing these by way of the global communications network

   Class 37: Building construction services; building construction supervision services; building project management, including the building and project management of homes and residential developments and commercial developments; repair and maintenance services for buildings; contracted and sub-contracted building services; the provision of information in respect of these services including information provided by way of the global communication network

   Class 42: Design services namely the design of homes, display villages and residential developments; architectural services; architectural services for construction services; drafting services; preparation and drawing up of house, property development and/or building plans; architectual, planning and design advisory and consultancy (non business) services in relation to home dwelling property developments; provided personally or by way of the global communications network

2. On 29 June 2022 Nano Home Loans Pty Ltd (‘Removal Applicant’) filed an application (‘Application’) seeking partial removal of the Trade Mark from the Register for non-use. The services sought to be removed from the specification are listed below:

   Class 36: Mortgage broking and associated referral services (‘Removal Services’)

3. On 18 August 2022 the Removal Opponent filed a Notice of Intention to Oppose the partial removal of the Trade Mark, followed by its Statement of Grounds and Particulars (‘SGP’) on 16 September 2022. On 11 October 2022 the Removal Applicant filed a Notice of Intention to Defend the Application.

4. The Removal Opponent filed the following Statutory Declarations as evidence in support (‘EIS’):

   • Statutory Declaration of Robyn Leigh Nori, Director of the Removal Opponent, made on 17 December 2017, with Exhibits EX-1 to EX-15 (‘Nori 1’).

• Statutory Declaration of Robyn Leigh Nori, made on 15 January 2023, with Exhibit RN-1 (‘Nori 2’).  

1. The Removal Applicant did not filed evidence.

2. Once time for filing evidence had ended the parties were given an opportunity to request a hearing or a decision without a hearing. On 26 May 2023 the Removal Applicant requested a decision without a hearing. The matter came before me, a delegate of the Registrar of Trade Marks. I make my decision based on the particulars in the SGP and the EIS filed by the Removal Opponent.

Legal Framework

1. Part 9 of the Trade Marks Act 1995 (Cth) (‘Act’) deals with removal of trade marks from the Register due to non-use.

2. The Removal Applicant nominated s 92(4)(b) of the Act as the ground for partial removal. Section 92(4)(b) of the Act provides:

   (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:

   (a)…

   (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.

3. Pursuant to s 100(1) of the Act, the Removal Opponent bears the onus of rebutting an allegation made under s 92(4)(b).

4. For the purposes of s 92(4)(b) the relevant period is the three year period ending on 29 May 2022 (‘Relevant Period’).

5. I note that 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,[1] and I confirm that five years since filing the Application have in fact passed.

   [1] Per s 93(2) of the Act prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 as applies in the present matter. The amended s 93(2) of the Act applies to trade marks filed from 24 February 2019 onwards.

6. In Woolly Bull Enterprises Pty Ltd v Reynolds, Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92 of the Act, namely it is ‘real, as opposed to token, use in a commercial sense’. [2] Provided the use is in good faith, ‘a single bona fide use of the mark’ may be enough to rebut an allegation of non-use.[3] Little weight is to be given to assertions of use which are not supported by documentary evidence.[4] In Nodoz Trade Mark, Wilberforce J said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[5]

   [2] [2001] FCA 261, [16].

   [3] Ibid [17].

   [4] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Delegate Forno).

   [5] (1962) RPC 1, 7.

7. I proceed on the basis that the burden of proof is the ordinary civil standard of the balance of probabilities.[6]

   [6] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of an action opposing registration rather than removal.

8. In accordance with s 101 of the Act, if the ground for partial removal is established, I may decide to remove the Trade Mark from the Register in respect of any of the Removal Services identified in the Application, or if satisfied it is reasonable to do so, decide not to partially remove the Trade Mark from the Register.

Use of the Trade Mark during the Relevant Period

1. The Removal Opponent is an Australian company and its directors are Mr and Ms Nori.[7] The Removal Opponent is overseen by the HOW-Strategy Group (‘HSG’). Other companies belonging to the HSG include Synergy Finance & Property Pty Ltd (‘Synergy’) and HOW-Nano Homes Pty Ltd which trades as HOW-Nano Homes (‘HNH’).

   [7] Nori 1, Exhibit 1.

2. In Nori 2, Ms Nori states that since 2001 her husband Mr Nori has been the sole director of Synergy. Synergy has operated as a mortgage broking company since January 2002 and has held an Australian Credit Licence since December 2010. Ms Nori states that on 24 March 2016 Synergy registered with the Australian Securities and Investment Commission (‘ASIC’) the business name HOW Home Loans (‘HHL’). Since then, Synergy operating under the name HHL, has offered mainstream residential and commercial loans, mortgage broking and referral services.

3. Ms Nori states that HSG intended to use the Trade Mark and offer the Removal Services to customers purchasing its HNH modular construction products. Mr Nori states that since 2016 HNH has offered for sale modular construction granny flats. However, HNH made no sales during or outside the Relevant Period due to the competitive nature of the granny flat market and the difficulties of breaking into the Sydney construction market. Ms Nori states that for the reasons above HSG has not used the Trade Mark in relation to the Removal Services during the Relevant Period. 

4. In the absence of evidence to the contrary I find no use of the Trade Mark in relation to the Removal Services during the Relevant Period.  

5. Further, the Removal Opponent’s evidence does not raise matters which could be regarded as obstacles to use of the Trade Mark in relation to the Removal Services in the Relevant Period, pursuant to s 100(3)(c) of the Act.

6. The ground for partial removal under s 92(4)(b) of the Act has been established in respect of the Removal Services.

Registrar’s discretion

1. Section 101(3) of the Act provides:

   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.

2. In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Court of the Federal Court provided the following observations regarding the discretion under s 101(3):

   The following propositions are relevant to the exercise of this discretion: 

   (1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter scope and purpose of Part 9 of the Trade Marks Act. 
   (2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. … 
   (3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. … [emphasis added]
   (4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark. [emphasis added] 
   (5) The range of factors considered in the exercise of the discretion has included whether or not: 

   (a) there has been abandonment of the mark; 

   (b) the registered proprietor of the mark still has a residual reputation in the mark; 
   (c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended; 
   (d) the applicant for removal had entered the market in knowledge of the registered mark; 
   (e) the registered proprietors were aware of the applicant’s sales under the mark; 
   

   [8] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ).

   (f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[8]

3. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated: 

   Although the “guiding principle behind the discretion is public interest, particularly in the integrity of the register” (Kowa Co Ltd v Organon [2005] FCA 1282 at [92], 223 ALR 27 at 41–2 per Lander J), the private commercial interests of both Gallo Winery and Lion Nathan 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: Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12 at [40], 202 CLR 45 at 65. Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Gummow, 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.[9] 

   [9] [2008] FCA 934, [210].

4. The Removal Opponent bears the onus of satisfying the Registrar that the discretion under s 101(3) ought to be exercised in its favour.[10]

   [10] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [273] (Yates J).

5. In this matter, the question is whether it is reasonable to not partially remove the Trade Mark in respect of the Removal Services in class 36, even though the Removal Opponent did not establish that it had used the Trade Mark in relation to those services.[11]

   [11] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [28] (Jacobson, Yates and Katzmann JJ).

6. Ms Nori claims that the removal of the Removal Services from class 36 would have a devasting impact upon HSG’s HOW-Nano business strategy to provide financial products to HNH’s modular construction customers. Ms Nori states that as the HOW Nano modular construction granny flats were not attractive to the market, the Removal Services offered under the Trade Mark will be aimed at customers of HSG’s new HNH modular construction product expected to be launched in 2023 and under development since 2016.

7. Ms Nori claims that since 2016 Mr Nori has met with various funders and mortgage managers who have offered HSG white label financial products that it could offer to customers using the Trade Mark. Ms Nori states that since 2017 Mr Nori and herself have been in talks with property developers and agents regarding HSG providing pre-approved finance packages for the purchase of HNH modular construction products.[12]

   [12] Nori 2, Exhibit RN-1.

8. Ms Nori states that on 15 August 2022, HOW Nano Home Loans (‘HNHL’) was registered as a business name by Synergy.[13] Ms Nori states that since September 2022 HSG has been negotiating with various web-designers to have its HNH website revamped and a new HNHL website developed.[14]  

   [13] Nori 2, Exhibit RN-1.

   [14] Nori 2, Exhibit RN-1.

9. The Removal Applicant did not file evidence or submissions however Nori 2 provides some background about the Removal Applicant and its interactions with the Removal Opponent. According to Ms Nori, the Removal Applicant was registered with the ASIC on 12 September 2019. On 28 October 2021 the Removal Applicant approached the Removal Opponent seeking a letter of consent for its pending trade mark applications 2117474 and 2175655. On the same day the Removal Opponent emailed the Removal Applicant objecting to the use and registration of the trade marks. On 11 November 2021 the Removal Applicant emailed the Removal Opponent offering $5,000 in exchange for an undertaking not to object to the registration of the trade marks. On 15 November 2021 the Removal Opponent responded to the Removal Applicant’s email stating that its position had not changed.[15] Ms Nori also notes that on 18 November 2022, the Australian Financial Review reported that the Removal Applicant was being acquired by the AMP Ltd for AMP Bank.[16]

   [15] Nori 2, [29] to [35] Exhibit RN-1.

   [16] Nori 2, [37] Exhibit RN-1.

10. The purpose of s 92 of the Act is the facilitate the removal of an unused trade mark and the public interest in the integrity of the Register will generally demand the removal of an unused trade mark. Accordingly, the Registrar’s discretion should not be exercised liberally, and the Removal Opponent bears the onus of satisfying the Registrar that the discretion should be exercised in its favour.

11. In the present case, I have the Removal Opponent’s declaratory evidence that the Trade Mark has not been abandoned. However, there is no evidence which allows me to confirm a residual reputation in the Trade Mark, or whether there have been sales of the Removal Services bearing the Trade Mark, following the Relevant Period. The Removal Opponent submits that partial removal of the Trade Mark would impact upon its HOW-Nano business strategy and the marketing of its brand which has been in development since 2016. However, I do not find this is necessarily the case. The Trade Mark was not used in relation to the Removal Services during the Relevant Period regardless of HNH’s attempt to sell modular construction granny flats to the market. The Removal Opponents stated actions to use the Trade Mark after the Relevant Period ended and leading up to the 2023 launch of its new modular construction product include Synergy registering the business name HNHL and negotiations with designers to design a HNHL website and create marketing materials. However, a business name and a trade mark are two distinct concepts. A business name is the name under which a business operates, it is administrative, not proprietary. Registration of a business name in itself contains no intellectual property rights.[17] Likewise, the Removal Opponent negotiating with various designers does not constitute use of the Trade Mark, nor provide a concrete intention to use the Trade Mark. Furthermore, these actions must be weighed against the fact that the Removal Opponent has had ample opportunity to use the Trade Mark in relation to the Removal Services. It has not done so.

    [17] Trade Marks Office Manual of Practice and Procedure Part 19A.2.2.3.

12. On balance, I am not satisfied that it is reasonable to exercise the discretion available under s 101(1) of the Act in favour of the Removal Opponent to allow the Trade Mark to remain on the Register in respect of the Removal Services. As such I decline to exercise the discretion.

Decision

1. The ground for removal under s 92(4)(b) has been established in respect of the Removal Services:

   Class 36: Mortgage broking and associated referral services

2. I direct that trade mark registration 1847514 be partially removed from the Register for the Removal Services. In the event of an appeal, the disposition of the partial removal will instead be subject to the decision made by the Court.

Costs

1. Both parties sought an award of costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Removal Opponent as allowed by Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Louise Tuohy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

29 August 2023