Opposition by Dajin Pei and World United Group Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by Comite International Olympique for removal of trade mark number 954703 (41) – WORLDEDU...

[2021] ATMO 142

TRADE MARKS ACT 1995

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

Re:Opposition by Dajin Pei and World United Group Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by Comite International Olympique for removal of trade mark number 954703 (41) – WORLDEDU (Figurative) – in the name of Dajin Pei and World United Group Pty Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: Self represented Applicant: Wrays Pty Ltd
Decision:	2021 ATMO 142 Trade Marks Act 1995 (Cth) - section 96 opposition: ss 92(4)(a) and (b) application for removal - Removal Opponent’s evidence does not show use of the Trade Mark during the relevant period or obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register

Background

1. This decision is pursuant to an application made on 12 December 2019 under ss 92(4)(a) and (b) of the Trade Marks Act 1995 (‘Act’) by Comite International Olympique (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of all the services for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.	954703
Lodgement date	20 May 2003
Services	Class 41: Academies (education); education; correspondence and on-line education; teaching and tuition; provision of training; schools and coaching centers; organizing, arranging and conducting of colloquiums, conferences, congresses, seminars, symposiums, workshops (training), competitions and exhibitions for educational or cultural purposes; production or publication of books, journals, on-line books, on-line journals, texts, electronic texts, films, radio programs, television programs, videotapes, cassette tapes, CDs, DVDs, electronic desktop publishing, for educational and cultural purpose; rental of things as prescribed in this class for educational and cultural purpose; club services (entertainment or education); information about education, entertainment and recreation; examinations and tests; educational services; guidance (vocational -) (education or training advice); translation; interpretation (sign language -); bookmobile services, lending libraries, libraries (lending -), library services, mobile library services, microfilming; news reporters services (‘Registered Services’)
Owners	Dajin Pei and World United Group Pty Ltd
Trade Mark	(‘Trade Mark’)

1. Dajin Pei and World United Group Pty Ltd (together ‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 10 February 2020 and a Statement of Grounds and Particulars (‘SGP’) on 7 March 2020.  The Applicant filed a Notice of Intention to Defend on 19 May 2020.

2. The Opponent subsequently filed evidence in support of its opposition to removal (‘EIS’).  The Applicant filed evidence in answer (‘EIA’) and the Opponent filed evidence in reply (‘EIR’).  This material will be discussed in more detail below.

3. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  On 15 March 2021 the Applicant requested a hearing by submissions and paid the appropriate fee.  The matter was set down for a hearing on 2 November 2021.  I was allocated to decide the matter as a delegate of the Registrar of Trade Marks.  In line with usual practice, a letter was sent to the parties on 30 August 2021 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Applicant filed written submissions on 26 October 20201 (‘Opponent’s Submissions’).  The Opponent did not file any submissions.

4. I am a delegate of the Registrar and the matter has been allocated to me to decide, which I have done, on the basis of the following relevant material:

   ·The Application for Removal;

   ·The Notice of Intention to Oppose and SGP;

   ·The Opponent’s EIS;

   ·The Applicant’s EIA;

   ·The Opponent’s EIR; and

   ·The Applicant’s Submissions. 

   The Relevant Provisions

5. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 of the Act relevantly provides:

   92  Application for removal of trade mark from Register etc.

   (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)  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 non-use application relates and that the registered owner:

   (iv)  has not used the trade mark in Australia; or

   (v)  has not used the trade mark in good faith in Australia;

   in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed;

   (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.

6. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 12 November 2019 (‘relevant period’).

7. 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 updated s 93(2) of the Act applies to Trade Marks filed from 29 February 2019 onwards.

8. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 of the Act which provides, relevantly to this matter:

   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.

   […]

   (3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

   (a) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or
    (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

   (i)  the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
   (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

   (c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

9. I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[2]

   [2] Pfizer Products Inc. v Karam [2006] FCA 1663 and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

10. In accordance with s 101 the Registrar may decide to remove the Trade Mark from the Register for all or some of the goods identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established.

11. I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[3] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[4]

    [3] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

    [4] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

    Opponent’s Evidence

12. The Opponent’s EIS and EIR in this matter consists of declarations made on 17 August 2020 (‘Pei 1’) and 12 January 2021 (‘Pei 2’), by Dajin Pei, one half of the Opponent.  Pei 1 and 2 both include several unnumbered attachments.

13. Pei 1 consists of several documents that are described below:

    ·A record of a business name registration for WorldEdu Network registered from 23 January 2019;

    ·A receipt from 19 January 2020 showing renewal of the domain name <worldedu.com.au>;

    ·Invoices from 2005 and 2020 for hosting fees, noting that the invoice for 2020 is for the domain name <worldism.com.au>;

    ·A  PDF of what is said to be the Opponent’s old website; however it is not clear when it was accessible and on what domain name;

    ·Advertisement receipts from 2005 and 2006;

    ·Undated brochures indicating the offering of Chinese language courses under the Trade Mark;

    ·Undated teaching material for the offering of Chinese language courses under the Trade Mark;

    ·Two invoices for Victorian Certificate of Education (VCE) coaching, one from 2006 and the other from 18 October 2019 bearing the Trade Mark (or a misspelled version therof); and

    ·A notice of Amended Assessment for World United Group Pty Ltd for the year ending 30 June 2019, however all the figures have been masked.

14. Pei 2 comments on the EIA, acknowledging that the Opponent has no social media presence and does not display its mark externally, rather it suggests that the Opponent’s business is conducted in the evenings on the weekdays and on the weekend. Pei 2 also attaches further evidence of domain name registrations and undated sample teaching material bearing the Trade Mark.

    Applicant’s Evidence

15. The Applicant’s EIA in this matter consists of a declaration made on 20 November 2020 by Craig Raymond Douglas, director of Nationwide Research Group Pty Ltd, a specialist research and investigation company that, amongst other things, investigates trade mark usage with Exhibits CRD-1 to CRD-3 (‘Douglas Declaration’). 

16. The Douglas Declaration states that between 2 November and 13 November 2019 his company investigated various databases including Google, ABN, ASIC, IP Australia, Internet Archive, and various social media platforms including Facebook, Instagram and Twitter, to determine if there was any use of the Trade Mark for the Registered Services.  His company was unable to identify any use of the Trade Mark for the Registered Services.

17. Mr Douglas gives evidence that World United Group Pty Ltd does appear to be involved in educational consultancy in Melbourne.  He also noted that the Opponent is related to a third party, being Worldism Group, that had maintained an operational but out of date website at but there was no use of the Trade Mark on that website or any other use of the Trade Mark by the Opponent.  

    Discussion

18. Sections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal. Because of the specifics of these provisions paragraph (a) is considered to effectively merge with paragraph (b) once a trade mark has been registered for five years.[5] As the Trade Mark had been registered for more than five years as at the date of the application I need only consider the application for removal under s 92(4)(b) in this case. Therefore, to successfully oppose the application the Opponent must establish that it has used the Trade Mark pursuant to s 100 of the Act (either through use or circumstances that were an obstacle to use in the relevant period). Use of the Trade Mark by another person who was authorised by the Opponent is taken to be use of the Trade Mark by the Opponent.[6] 

    [5] M Davison Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2016 Thomson Reuters, [70.510].

    [6] s 7(3) of the Act.

19. If the Opponent fails to establish such use, the Registrar may exercise its discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register.

    Use of the Trade Mark in the relevant period

20. As noted above the burden is on the Opponent to establish use of the Trade Mark, ideally by providing clear dated evidence from the non-use period showing the offering of the Registered Services.  Most of the material provided by the Opponent in its EIS is either undated (the educational material) or dated from prior or post the relevant period (the advertising material and the domain name invoice).  The Opponent does provide a screenshot of a website but this does not clearly indicate when it was active (and from what domain name). 

21. The fact that the Opponent owns a business name registration and domain names that correspond to the words in the Trade Mark does not, by itself, show use of the Trade Mark for the specific services for which the Trade Mark is registered; the use must be in relation to specific services and absent evidence of an operating website or services offered under the business name there is no use of a trade mark as a badge of origin.  I also accept the evidence in the Douglas Declaration which states that during the period shortly before the end of the relevant period Mr Douglas’ company was unable to find any evidence of use.

22. The Opponent provides one dated document that may show evidence of use, namely a single invoice dated 18 October 2019 for $425 for what is described as VCE coaching.  While, as noted in paragraph 12 above a single bona fide use of a mark is sufficient the evidence of such should be if not conclusive proof, at any rate overwhelmingly convincing proof.  The Opponent does not provide evidence of precisely when these services were provided, the exact nature of the services (other than VCE coaching) and the location of the services. Furthermore, the trade mark on the invoice is misspelled (WolrdEdu) which does not inspire confidence that the invoice involves a good faith use of the Trade Mark.  As such, this single document falls short of providing overwhelmingly conclusive proof that the Trade Mark was used in relation to a subset of the Registered Services during the relevant period. I am not satisfied that the Opponent has used the Trade Mark for the Registered Services in the relevant period.

    Obstacles to use

23. The Opponent does not formally submit that there have been any matters that amount to an obstacle to the use of the Trade Mark for the Registered Services in the relevant period, pursuant to s 100(3)(c) of the Act and, in the interests of completeness, I note that I have been unable to identify any such obstacles. As there is no obstacle to use of the Trade Mark, it is therefore necessary to consider whether the Registrar should exercise her discretion to allow the Trade Mark to remain on the Register for any of the Registered Services.

    Registrar’s Discretion

24. To exercise the discretion in s 101(3) I must be positively satisfied that, despite the lack of use or obstacles to use, it is reasonable to not remove the Trade Mark in respect of the Registered Services.[7] The burden of persuasion in this regard falls on the Opponent.[8]

    [7] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ).

    [8] Ibid.

25. The Opponent has made no submissions in respect of the discretion. I therefore do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of any of the Registered Services.

    Decision

26. The Opponent has not established its opposition to removal. Accordingly, I direct that registration 954703 be removed from the Register one month from the date of this decision.  If the Registrar is served with a notice of appeal before then I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.

    Costs

27. The Applicant has been successful in relation to the application for removal of the Trade Mark and has requested its costs.  I award costs against the Opponent in accordance with Schedule 8 of the Trade Mark Regulations 1995 (Cth).

    Nicholas Smith
    Hearing Officer
    Hearings and Oppositions
    23 November 2021