Opposition by Diana Todd to application by Balance Tax Pty Ltd to remove trade mark number 1867667 (35) – BALANCE TAX - in the name of Diana Todd
[2021] ATMO 37
•12 May 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Diana Todd to application by Balance Tax Pty Ltd to remove trade mark number 1867667 (35) – BALANCE TAX - in the name of Diana Todd
Delegate: | Louise Tuohy |
Representation: | Opponent: Ian Horak of Counsel instructed by Girl Friday IP Applicant: Michael Martin of Acumen Intellectual Property |
Decision: | 2021 ATMO 37 Trade Marks Act 1995 (Cth) – section 96 opposition to s 92(4)(a) application for removal – use in good faith established on all services - Trade Mark to remain on Register |
Background
Diana Todd (‘Removal Opponent’) is the registered owner of the following trade mark:
Registration Number: 1867667
Trade Mark: BALANCE TAX (‘Trade Mark’)
Filing Date: 25 August 2017
Specification: Class 35: Advice on tax preparation; Preparation of documents relating to taxation; Preparation of income tax returns; Preparation of tax returns; Tax advice (accountancy); Tax assessment (accountancy) consultancy; Tax assessment (accounts) preparation; Tax consultancy (accountancy); Tax filing services; Tax planning (accountancy); Tax preparation; Tax return advisory (accountancy) services; Tax return preparation; Tax services (business management and accountancy services); Book-keeping; Computerised book-keeping; Business consultancy; Business consultancy to firms; Business consultancy to individuals; Strategic business consultancy (‘Services’)
Balance Tax Pty Ltd (‘Removal Applicant’) applied on 16 August 2019 under the provisions of s 92(4)(a) of the Trade Marks Act 1995 (Cth) (‘Act’) seeking removal of the Trade Mark. The removal application was made in respect of all of the Services.
On 29 August 2019 the Removal Opponent filed a Notice of Intention to Oppose removal of the Trade Mark, followed by a Statement of Grounds and Particulars (‘SGP’) on 25 September 2019. On 4 November 2019 the Removal Applicant filed a Notice of Intention to Defend the removal application.
The Removal Opponent filed the following declarations as evidence in support and evidence in reply:
· Declaration by Fiona Nguyen, principal of Girl Friday IP Pty Ltd for the Removal Opponent, made on 6 February 2020 with Exhibits FN-1 to (‘Nguyen’); and
· Declaration by Diana Todd, the Removal Opponent, made on 10 July 2020 with Exhibits DT-1 to DT-4 (‘Todd’).
The Removal Applicant filed the following declarations as evidence in answer:
· Declaration by Anthony John Campbell, sole director of the Removal Applicant, made on 11 May 2020 with Annexures AJC1 to AJC15 (‘Campbell’); and
· Declaration by Michael Adrian Edward Martin, Patent and Trade Mark Attorney of Acumen Intellectual Property for the Removal Applicant, made on 11 May 2020 with Annexures MM1 to MM18 (‘Martin’); and
· Declaration by Augustus Ernest Lee-Steere, Business Consultant to the Removal Applicant, made on 11 May 2020 (‘Lee-Steere’).
I heard the matter in Canberra on 15 March 2021, as a delegate of the Registrar of Trade Marks. Ian Horak of Counsel instructed by Fiona Nguyen of Girl Friday IP appeared by via video link on behalf of the Removal Opponent. Michael Martin of Acumen Intellectual Property appeared by way of telephone conference link on behalf of the Removal Applicant. The representatives’ oral submissions were supported by written submissions filed prior to the hearing.
Legal Framework
Part 9 of the Act deals with removal of trade marks from the Register due to non-use.
Section 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;
The Removal Opponent bears the onus of rebutting an allegation made under s 92(4)(a). This onus is contained in s 100 of the Act which 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
[…]
(2) For the purposes of paragraph 1(b), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time before 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 before 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 in relation to those goods or services before 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 before that period as having been a use of the trade mark in relation to those goods or services by the registered owner.
[…]
In Woolly Bull Enterprises Pty Ltd v Reynolds,[1] Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92 of the Act, namely ‘real, as opposed to token, use in a commercial sense’. In relation to the type of evidence that would be sufficient to establish trade mark use, ‘the tribunal may not be persuaded by evidence that is solely from the internal files of the opponent’[2] or of a circumstantial nature,[3] although one invoice, if genuine, will suffice.[4] Little weight is to be given to assertions of use which are not supported by documentary evidence.[5]
[1] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] 107 FCR 166, [153-154].
[2] Re Nodoz Trade Mark [1962] RPC 1.
[3] Trina Trade Mark [1977] RPC 131.
[4] Prosimmon Golf (Aust) Pty Ltd v Dunlop Australia Ltd (1987) 9 IPR 425; Geo W McPherson Nominees Pty Ltd. v Remington Arms Co. Inc. (1999) 47 IPR 636.
[5] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8.
The burden of proof is the ordinary civil standard being on the balance of probabilities.[6]
[6] Pfizer Products Inc. v Karam [2006] FCA 1663 and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].
In accordance with s 101 of the Act, if grounds for removal are established I may decide to remove the Trade Mark from the Register in respect of any or all of the Services, or, if satisfied it is reasonable to do so, decide not to remove the Trade Mark from the Register.
Discussion
In the SGP the Removal Opponent particularises its rebuttal of the s 92(4)(a) ground as follows:
The Opponent, Diana Todd, is a registered taxation agent and trades under the name Balance Tax Accountants. The Opponent provides taxation and accounting services under the trade mark BALANCE TAX.
The Opponent first devised and began using the trade mark BALANCE TAX in the course of trade in March 2017. The Opponent had registered the business name Balance Tax Accountants with the Australian Securities Investment Commission (ASIC) and domain name in March 2017. The Opponent’s website, which features the trade mark BALANCE TAX, was live and active as of 16 March 2017.
Additionally, the Opponent had secured the user name “@balancetax” across various social media channels, such as Facebook and Instagram, to assist in the promotion of its business and services. The Facebook business page ( was established and published on 22 March 2017. The Instagram account ( was established and active as of 26 April 2017.
From the above date of first use, to the present date, the Opponent has offered a range of accounting and taxation services to individuals and SMEs, including providing taxation advice, preparing taxation documents and returns, conducting tax assessments, bookkeeping and payroll services under the trade mark BALANCE TAX.
The Opponent proceeded to file an Australian application to register its trade mark BALANCE TAX in class 35 in respect of a range of taxation and accounting services. On receiving advice in respect of the trade mark matter, the Opponent opted to proceed with registration of its core and distinctive brand BALANCE TAX, as it was advised that the addition of the word “accountants” was merely descriptive.
The Applicant for removal for non-use, Balance Tax Pty Ltd, has sought the removal of the Opponent’s Australian Trade Mark Registration No. 1867667 BALANCE TAX (word) in class 35 on the basis of Section 92(4)(a) of the Trade Marks Act 1995 (Cth).
As outlined above, on the day on which the application for the registration of BALANCE TAX (word) was made, being 25 August 2017, the Opponent had an intention in good faith, and in fact had use of the trade mark, in Australia in respect of the services claimed within class 35. The Opponent has continued and extensive use of the trade mark BALANCE TAX (word) since the date of application.
In the determination of this opposition proceeding, the Opponent also seeks the discretion of the Registrar pursuant to Section 101(3) of the Trade Marks Act 1995 (Cth).
In order to successfully rebut an allegation under s 92(4)(a) of the Act, the Removal Opponent needs to establish that on the day on which the Application was filed, it had the intention to use the Trade Mark (or the Trade Mark with additions or alterations not substantially affecting its identity) in good faith in respect of the Services. Alternatively, the Removal Opponent may establish that the Trade Mark (or the Trade Mark with additions or alterations not substantially affecting its identity) was used in good faith in Australia in relation to the Services at any time before the period of one month ending on the day on which the Application was filed (‘relevant period’).
The Removal Opponent has provided evidence which it argues shows use of the Trade Mark during the relevant period, as well as an intention in good faith to use the Trade Mark in relation to the Services. The Removal Applicant has criticised this evidence on two bases. As preliminary matters, I will deal with both of those criticisms before proceeding to the discuss the Removal Opponent’s evidence in detail.
The Removal Applicant argues that the Trade Mark is used with additions or alterations which substantially affect its identity.
The Nguyen and Todd declarations show use of the Trade Mark with various additions and/or alterations including: Balance Tax Accountants; Balance Tax Accounting; and the Balance Tax Accountants logo, as shown below:
Section 100 provides that if use of any of the trade marks mentioned above is use of the Trade Mark with additions or alterations that do not substantially affects its identity, then that use can be taken to be use of the Trade Mark. Such substantial identity requires that when trade marks are compared side by side ‘a total impression of similiarty’ emerges.[7]
[7] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375, [391].
The Trade Mark is made up of two words BALANCE and TAX. The main and distinguishing element of the Trade Mark is BALANCE and the element TAX is descriptive of the Services. When the words ACCOUNTANTS or ACCOUNTING are used in relation to the Services each is also descriptive. Neither forms an essential element of BALANCE TAX ACCOUNTANTS or BALANCE TAX ACCOUNTING. Consequently, their presence is not an addition to the Trade Mark which substantially affects its identity. Likewise, the positioning of the words BALANCE and TAX ACCOUNTANTS and the inclusion of the dots in the logo above are minor alterations and additions which do not substantially affect the identity of the Trade Mark. Consequently, I find that use of the words Balance Tax Accountants, Balance Tax Accounting or the logo by the Removal Opponent constitutes use of the Trade Mark.
The Removal Applicant also submits that the information and documents obtained from the internet archiving service Wayback Machine, and social media pages are not appropriate evidence, citing a Federal Court judgement,[8] and then reasoning from that, that these documents are from third party businesses that have closed operating processes that cannot be verified. The passages of the judgement cited in submissions relate to the rules of evidence. I am not bound to follow the rules of evidence in these proceedings.[9] Even were that not the case, the Federal Court has taken a different position with this type of evidence several times since that 2008 ruling. In Pinnacle Runway Pty Ltd v Triangl Ltd, Murphy J while recognising the limitations of such evidence, said that website screenshots are ‘not inadmissible hearsay’.[10] Taking a similar view to Burley J in Dyno Nobel Inc v Orica Explosive Technology Pty Ltd (no.2):[11] ‘I consider that the screenshots are likely to be a reliable indication of the content of the relevant websites at different points in time’.[12] Therefore, I consider the later approach of the court in relation to the Wayback Machine extracts ought to be preferred particularly in the absence of evidence to call the actual content of these pages into question.
[8] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [123]-[129].
[9] Trade Marks Regulations 1995 (Cth) reg 21.15(4).
[10] [2019] FCA 1662, [115].
[11] [2019] FCA 1552, [9].
[12] Pinnacle Runway Pty Ltd v Triangl Ltd, [2019] FCA 1662, [120].
In relation to information and documents obtained from social media accounts I note the Removal Opponent has been using its Facebook account since March 2017 and Instagram account since April 2017[13] under the handle @balancetax. I have also treated this evidence as a reliable indication of the content of the relevant sites at a particular point in time. In doing so, I have taken note of the Removal Applicant’s cautions relating to the dates of some of this material.
The Removal Opponent’s Evidence of Use
[13] Nguyen [16]-[17].
Todd avers that prior to and at the time of filing the Trade Mark the Removal Opponent had already began using the Trade Mark in commerce in good faith.[14]
[14] Todd [11].
Nguyen states the Removal Opponent first established and began operating a business under the name ‘Balance Accounting Solutions’ in September 2015.[15] Upon receiving her taxation agent registration and license, the Removal Opponent evolved her business to include taxation services and changed the business and brand name to ‘Balance Tax Accountants’ in March 2017.[16]
[15] Nguyen [7], Exhibit FN-1.
[16] Nguyen [11], Exhibit FN-2.
Nguyen claims that the Removal Opponent registered the domain name balancetax.com.au in March 2017. Exhibit FN-3 supports this claim as it provides screenshots from the Wayback Machine which are dated shortly after that date, being 18 July 2017. The archived pages show the Removal Opponent’s website at the domain name balancetax.com.au. The archived pages also show use of the Trade Mark in relation to a range of accounting, taxation and consulting services.
The Removal Opponent has established a strong online presence in respect of Trade Mark through the use of social media platforms. Nguyen includes exhibits of the Removal Opponent’s social media presence under the handle @balancetax. Exhibit FN-5 provides screenshots of pages from the Removal Opponent’s Facebook account that shows the Removal Opponent’s account name was changed from ‘Balance Accounting Solutions’ to ‘Balance Tax Accountants’ on 22 March 2017, and screenshots of pages showing use of the Trade Mark in relation to the Services in Facebook posts dated in December 2017. Exhibit FN-6 provides screenshots from the Removal Opponent’s Instagram account featuring the Trade Mark in relation to the Services published on 26 and 27 April 2017.
Nguyen states that the Removal Opponent regularly promotes the Trade Mark by hosting or attending events, to present financial information and workshops. Exhibit FN-11 is a screenshot from the Removal Opponent’s Facebook Events page showing details of an event, held on 10 August 2017 in which the Removal Opponent presented a session on business finances.
Further examples of the promotion of the Trade Mark are found in confidential Exhibit FN-13 which is an invoice to the Removal Opponent for business cards featuring the Trade Mark dated 12 April 2017. Confidential Exhibit FN-15 are invoices issued by the Removal Opponent to clients dated 14 July 2017 and 19 August 2017.
The Removal Applicant’s submissions
The main arguments advanced by the Removal Applicant in this case regards the state of mind of the Removal Opponent and whether it intended to use the Trade Mark in good faith. The Removal Applicant’s submissions asserts that its evidence shows that Removal Opponent was not only aware of the Removal Applicant’s trade mark before it obtained its business registration, it was further advised of this before its trade mark application was filed. Consequently, the Removal Applicant submits that the Removal Opponent filed the application not with the intention of using the Trade Mark but as a means to impede the Removal Applicant and accordingly there was no intention in good faith to use the trade mark in Australia.
In Structureco Inc v Starite Distributors Pty Ltd the Registrars delegate Mr Forno said:
Although the opponent to removal does bear the initial onus, in accordance with the legislation, I think that, in the case of applications for removal under s.92(4)(a), where the primary allegation regards the state of mind of an applicant for registration about whether it intends to use a mark in good faith, then that onus is not high. I believe that it is so low that it can be overcome if the opponent or its agent states that it was the case that the applicant for registration had an intention to use the mark in good faith. The onus should then shift to the removal applicant to support its case - perhaps by the production of some evidence which might support a circumstantial case of a lack of good faith, or by some other means.[17]
[17] [2000] ATMO 31; (2000) 49 IPR 209.
Wilcox J went further in Nikken Wellness Pty Ltd v van Voorst:
I do not think [the Opponent] bears any onus in relation to the application for removal. It is for the applicant for removal […] to persuade Court that the requirements of s 92(4)(a) are satisfied.[18]
[18] [2003] FCA 816, [59].
In support of its allegations the Martin declaration claims that the Removal Applicant’s business name BALANCE TAX PTY LTD and company records existed in the Australian Securities & Investment Commission (‘ASIC’) database records in 2016 and 2017 and would have appeared in any search carried out by the Removal Opponent over that period.[19]
[19] Martin [5]-[21].
The Campbell declaration claims that on or shortly before 20 June 2017 Mr Campbell, the sole director of the Removal Applicant became aware of a business trading under the name ‘Balance Tax Accountants’ and the presence of the website balancetax.com.au. In response, Mr Campbell used the contact page on the website to send a cease-and-desist message advising that the name ‘Balance Tax’ already existed and provided tax agent services.
Annexure AEL-S3 in the Lee-Steere declaration provides a copy of an email dated 20 June 2017 from Mr Campbell to Mr Lee-Steere alerting him of the presence of the Removal Opponent’s website and the suburb in which the Removal Opponent operates.
In reply to these allegations Todd declares that before adopting the name ‘Balance Tax Accountants’ the Removal Opponent conducted online searches of the ASIC database, the internet and Australian Trade Mark Search for identical existing names and trade marks.[20]
[20] Todd [5]-[10].
In my assessment, the evidence before me provides clear and sufficient information to demonstrate that on the day on which the application for the registration of the Trade Mark was filed the Removal Opponent intended to operate a business providing the Services under the Trade Mark. What is more, the Removal Opponent has also used the Trade mark in relation to the Services during the relevant period.
I reach these conclusions on the basis that since March 2017, prior to the filing date of the application, the Removal Opponent created a website and social media presence (posting regular updates), engaged in promotional activities, procured business materials, and issued invoices to clients under the Trade Mark in relation to the Services.
On the question of whether this intention and use was in good faith, s 100 of the Act requires no more than use (or intent to use) the Trade Mark for ordinary commercial purposes.[21] The evidence I have discussed plainly shows that the Removal Opponent’s business has been offering the Services under the Trade Mark since March 2017 for normal commercial motives of profit and goodwill. The Removal Applicant has provided no cogent evidence which would justify a conclusion the demonstrated use by the Removal Opponent was fictitious or token.
[21] Liquideng Farm Supplies Pty Ltd v Liquid Engineering 2003 Pty Ltd [2009] FCAFC 7, [52]-[55].
I find that the ground for removal under s 92(4)(a) is rebutted with respect of all the Services.
Decision
The Removal Opponent has established its opposition to the removal of the Trade Mark in respect of the Services. The Trade Mark shall remain on the Register.
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 Applicant as allowed by Schedule 8 of the Trade Marks Regulations 1995.
Louise Tuohy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
12 May 2021
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