Opposition by Estate Agents Co-operative Limited to application by Shadow Holdings (Vic) Pty Ltd for removal of trade mark 615235 (36) – MULTILIST - in the name of Estate Agents Co-operative Limited

[2021] ATMO 42

TRADE MARKS ACT 1995

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

ReOpposition by Estate Agents Co-operative Limited to application by Shadow Holdings (Vic) Pty Ltd for removal of trade mark 615235 (36) – MULTILIST - in the name of Estate Agents Co-operative Limited

Delegate:                 Robert Wilson

Representation:       Opponent: Von Muenster Solicitors & Attorneys Pty Limited

Applicant: Gadens Lawyers

Decision:                   2021 ATMO 42

Trade Marks Act 1995 (Cth) - Section 96 opposition: opposition to application for removal pursuant to s 92(4)(b) unsuccessful – no use of trade mark during relevant period – discretion not to remove not exercised – trade mark to be removed from Register

Background

1. Estate Agents Co-operative Limited (‘the Opponent’) is the registered owner of trade mark registration number 615235, relevant details of which are as follows:

Filing Date:	2 November 1993
Services:	Class 36: Real estate and housing agents and broker services (‘the Challenged Services’) [1]
Trade Mark:	MULTILIST	(‘the Challenged Trade Mark’)

[1] The Challenged Services are all of the services for which the trade mark is registered.

2. Unless otherwise indicated, 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.

3. On 20 April 2019, Shadow Holdings (Vic) Pty Ltd (‘the Applicant’) filed an application (‘the Application’) based on s 92(4)(b) seeking removal of the Challenged Trade Mark from the Register, alleging that the Challenged Trade Mark was not used in good faith in relation to any of the Challenged Services during the three year period ending on 20 March 2019 (‘the Relevant Period’). The Opponent filed a Notice of Opposition consisting of a Notice of Intention to Oppose and a Statement of Grounds and Particulars (‘SGP’) both of which were filed on 22 November 2019. The Removal Applicant filed a Notice of Intention to Defend on 14 April 2020.

Evidence

4. Only the Opponent filed evidence in this matter, being its Evidence in Support, which consists of:

• Statutory Declaration made on 15 July 2020 by Sylvia Cortez, the Chief Executive Officer of the Opponent, with Exhibits A to J (‘the Cortez declaration’).

Nature of Hearing

5. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. Initially, the parties requested an oral hearing; however, in the end both decided that a hearing was not required. The Applicant chose to rely on written submissions only. Those submissions were prepared by Peter Creighton-Selvay of Counsel. Mr Creighton-Selvay was instructed by Gadens Lawyers. The Opponent did not file any submissions; however, the Cortez declaration contains some material which is in the form of submissions and it will be treated as such.

6. It has fallen to me, as a delegate of the Registrar of Trade Marks, to decide the matter, which I have done based on the material discussed above.

The Opponent

7. According to the Cortez declaration:

Founded in 1960, [the Opponent] is an industry network for member and non-member agents which provides real estate support services (as well as products and services) to independent and franchise estate agents across New South Wales.

In 1981, [the Opponent] established a central registry system called Multilist. A mult-listing or multi-listing agreement is on option available to [the Opponent’s] members. Individuals selling property list the property with a single real estate agent, and the agent lists the property in the Multilist system. [The Opponent’s] Multilist system facilitates a central registry where any [member of the Opponent] may show and sell any property in the Multilist pool to a buyer for a share of the commission.

The Applicant

8. There is nothing before me from which I might provide a background of the Applicant; however, I note that the Applicant has applied to register the following trade mark:

Application Number:	2114799
Filing Date:	26 August 2020
Goods and services (including):	Class 36: (including) Advisory services relating to real estate ownership and valuations; agency services for the leasing of real estate property; agency services for the selling on commission of real property; appraisal of real estate; brokerage of real estate; commercial real estate agency services; consultation services relating to real estate; estate agency; estate agent services …
Trade Mark:	MULTILIST

Legal Framework

9. 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. 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. 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 Challenged Trade Mark (or the Challenged Trade Mark with additions or alterations which do not substantially affect its identity) was used in good faith in Australia during the Relevant Period, or that there was a relevant obstacle to use. The Opponent has not asserted that there was a relevant obstacle to use, so that question need not be considered further. 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.

2. 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 Challenged 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 Challenged Trade Mark used the trade mark in the course of trade in respect of all the Challenged Services, in good faith, during the Relevant Period. It is necessary that the Opponent provide evidence of use which clearly dated and shows use during the Relevant Period. Evidence of use which falls outside of the Relevant Period is generally of little or no assistance to the Opponent in establishing use during the Relevant Period.

1. It is stated in the Cortez declaration that:

   [The Opponent] originally adopted [the Challenged Trade Mark] in 1981 to promote and sell its multi-listing services, and it has continuously used [the Challenged Trade Mark] to promote its Multilist registry system and services since that time.

   To date, [the Challenged Trade Mark] is being used by [the Opponent] in its online presence and domains; appears in a number of online publications including directories of realtors and realty services; and appears on individual realtor members’ websites, as set out below.

Specifically, it is declared that the Opponent used the Challenged Trade Mark ‘in good faith … from 11 November 1981 up to the registration of the mark on 2 November 1993 and continuously to date’. That period includes the Relevant Period.

The evidence of use

1. The Cortez declaration contains a number of exhibits which, it is asserted, support the claims of use during the Relevant Period. Throughout the Cortez declaration the Opponent is referred to as ‘EAC’. For the sake of simplicity and clarity, those references have been left unaltered in most of the quotations from the declaration which follow. The evidence will first be described then followed later in the decision by an analysis.

2. Exhibit A to the Cortez declaration is declared to be ‘a copy of the EAC Rules (by-laws) which are made available to members and non-member agents and specify how Multilist should be used’. Other than ‘Revised May 2011’ (a date well before the Relevant Period) there is no date on the document. There is no statement in the declaration that the document was provided to customers (members and non-member agents) of the Opponent, or to anyone, during the Relevant Period. The document contains the heading ‘The EAC Multilist System’. Under that heading, the following references appear: ‘EAC Multilist Exclusive Selling Agency agreement’, ‘the Multilist system’, ‘Multilisted properties’, ‘a Multilisted property’, ‘Multilist listing’, ‘the Co‑operatives [sic] Multilist system’ and ‘a property which is, or is to be, Multilisted’.

1. Exhibit B is declared to be:

   [T]he NSW Government Department of Fair Trading’s Regulatory Impact Statement: Strata Schemes Management Regulation 2016 dated April 2016 exhibiting [the Challenged Trade Mark] and listing EAC Multilist as a stakeholder at page 53.

The exhibit appears as described and the document has 45 pages. In Appendix 4 to the document, ‘EAC Multilist’ appears as one of a dot point list of some 29 ‘Key stakeholders’. This is the only apparent use of ‘multilist’ in the entire document.

1. Exhibit C is declared to be:

   [T]he listing for Gloopla, the global directory of realtors & realty services, exhibiting bona fide commercial use of the Mark and referencing the EAC Multilist during the entire relevant period (current at 16 June 2020 and available via: (URL provided)).

The exhibit consists of a single page document which appears to be a capture of the web page described. It is apparent from the date in the header of the document that it was captured on 21 November 2019 (after the Relevant Period). The page prominently bears EAC at the top. The page contains a single occurrence of MULTILIST as part of the following sentence:

EAC is best known in the property market place for its Multilist service, launched in 1981, where information about properties for sale are ‘multilisted’ by EAC member agencies throughout the local area.

I note, for clarity, that this is not an example of the webpage as might be obtained from an archive service some time after the Relevant Period and which might have provided a record of how the webpage appeared during the Relevant Period—no such evidence has been provided in this matter.

1. Exhibit D is declared to be:

   [T]he webpage for Addlist, EAC’s listing management system, exhibiting bona fide commercial use of the Mark and referencing the EAC Multilist during the Relevant Period (current at 16 June 2020 and available via (URL provided)).

This single page document is also an apparent capture which is dated 21 November 2019 (after the Relevant Period).

1. The Cortez declaration states that the Challenged Trade Mark has ‘been used by EAC members exhibiting the Mark upon each of the following EAC member websites’. Exhibit E is declared to be, ‘the use of the Mark by EAC members exhibiting the Mark and referencing the EAC Multilist and which were published during the Relevant Period (current at 16 June 2020)’. Screenshots of the eight websites listed are provided. The screenshots appear to have been obtained on either 21 or 22 November 2019 (after the Relevant Period). Each screenshot makes reference to EAC Multilist, E.A.C Mulitlist or EAC multilist. Typically, the reference is along the lines of, ‘The company is a member of EAC Multilist’. There is no use of ‘Multilist’ in the exhibit where it does not appear as part of ‘EAC Multilist’. I note the following text which appears in one capture:

   Robert Henry Statewide Realty has been members of EAC Multilist for many years (currently trading as EAC Red Square – Real Estate Innovations). Offering maximum exposure for properties listed in Red Square’s listing system. … Red Square’s proven track record ensures your property receives the most beneficial and effective promotion.

and in another capture:

We are a member of EAC Multilist – Now known as Red Square-Real Estate innovations, offering maximum exposure for properties listed in the Red Square’s listing system.

There is no reference to ‘EAC Red Square’ in the Cortez declaration which might shed some light on the implications of those statements.

1. Exhibits F, G and J, are declared, respectively to be:

   a spreadsheet of data extracted from the Multilist system showing bona fide commercial use of the “MULTILIST”, including any Multilist property listed since the beginning of 2016 and listed continuously to date.

and

a spreadsheet of data extracted from the Multilist system showing the bona fide commercial use “MULTILIST” [sic], including any eForms (Multilist Agreements) completed since the beginning of 2016 and listed continuously to date.

and

a spreadsheet of data showing the “MULTILIST” listing extracted from the Multilist system, which was published during the Relevant Period.

The Challenged Trade Mark appears nowhere in any of those exhibits. In the absence of submissions from the Opponent it is unclear how these exhibits might assist the Opponent.

1. Exhibit H is declared to be ‘a copy of the current Multilist Exclusive Selling Agency Agreement (version: July 2011) exhibiting the Mark and listed continuously to date’. The seven page document has as a heading on the first page ‘MULTILIST EXCLUSIVE SELLING AGENCY AGREEMENT’ and is dated July 2011 as declared. I note that this date is some five years prior to the start of the Relevant Period. ‘Notes for Multilist Exclusive Selling Agency Agreement © 2011 …’ appears in the footer of all but the first page of the document. ‘Multilist’ does not seem to appear elsewhere in the document. There is no evidence that this document was accessed by anyone during the Relevant Period.

2. Exhibit I is declared to be ‘a copy of the current Multilist Auction Agency Selling Agreement (version: July 2011) exhibiting the Mark and listed continuously to date (current at 16 June 2020 and available via: [URL provided]’. The seven page document appears to be identical (but for very minor wording changes) to the document which appears in Exhibit H. Along with the minor changes in wording, a different heading ‘MULTILIST AUCTION AGENCY SELLING AGREEMENT’ appears on the first page. This document is also dated July 2011. In this case ‘Notes for Multilist Auction Selling Agency Agreement © 2011 …’ appears in the footer on all but the first page. There is no evidence that this document was accessed by anyone during the Relevant Period.

Assessment of the evidence

1. The Applicant submitted that the Opponent ‘has not proven a single use’ of the Challenged Trade Mark in relation to the Challenged Services during the Relevant Period. I note that the Applicant’s submissions appear to refer to a declaration made by Sylvia Cortez which was originally filed with the SGP (‘the earlier declaration’) rather than the Cortez declaration (which was correctly filed as evidence in support). As the earlier declaration was not filed during the period for filing evidence in support, it does not form part of the evidence in this matter. All but one of the exhibits which appeared in the earlier declaration also appear in the Cortez declaration, although they are differently numbered. There are no exhibits in the Cortez declaration which did not appear in the earlier declaration. Where the Applicant’s submissions refer to an exhibit in the earlier declaration it is clear to which exhibit in the Cortez declaration they refer. The Opponent’s evidence has significant shortcomings which are discussed below.

2. In respect of Exhibits F, G and J, the Applicant submitted:

   All three exhibits are wholly irrelevant.

   First, there is no evidence in relation to either the provenance, or contents, of any of [those exhibits]. …

   Second, … [none of the exhibits] involve any use of [the Challenged Trade Mark] at all … They provide no evidence, whatsoever, of the use of [the Challenged Trade Mark] …

   Third, … there is no evidence that the [Challenged Trade Mark] was used in relation to any of the [listings]. Tellingly, [the Opponent] does not even allege that [the Challenged Trade Mark] was used in relation to any of the listings …

I concur with Applicant’s assessment of these exhibits: they do not assist the Opponent.

1. Of the remaining exhibits only Exhibit B is dated during the Relevant Period. Where the exhibits are dated outside of the Relevant Period there is no documentary evidence to support a view that those documents were distributed or otherwise used in a relevant manner during the Relevant Period. The exhibits dated outside the Relevant Period do not assist the Opponent.

2. In respect of Exhibit B, the Applicant submitted:

   [Exhibit B] is irrelevant.

   First, it is clear that [the exhibit] was published by NSW Fair Trading, not [the Opponent]. There is no evidence (or indeed any suggestion) that NSW Fair Trading is an ‘authorised user’ of [the Challenged Trade Mark] within the meaning of section 8 of the TMA. It follows that irrespective of what [Exhibit B] might establish, it cannot establish any use of [the Challenged Trade Mark] by [the Opponent].

I agree with the Applicant’s submissions. This exhibit does not assist the Opponent.

1. None of the Opponent’s evidence establishes that the Opponent used the Challenged Trade Mark during the Relevant Period. Consequently, the Opponent has failed to discharge its burden under s 100. However, that is not the end of the matter as determination of the outcome falls under s 101.

Determination of the opposed application

1. Section 101 deals with the determination of the opposition to the Application. Section 101(1) states, essentially:

   If the Registrar is satisfied that the grounds on which the application was made have been established the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

2. The inclusion of ‘may decide to remove’ in s 101(1) indicates that the decision of the Registrar to remove a trade mark from the Register is discretionary. Section 101(2) provides a similar discretion to ‘the court’. Section 101(3) explicitly states, seemingly redundantly, that there is a discretion available to the Registrar; although the discretion under s 101(1) is expressed as a discretion to remove, whereas the discretion under s 101(3) is expressed as a discretion not to remove. As indicated above, there are no formal submissions from the Opponent; however, there are statements in the Cortez declaration which are pertinent to the exercise of the discretion. These will be considered below.

Consideration of the Registrar’s Discretion 

1. The discretion available to the Registrar is ‘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 Act’.[3] ‘[T]he discretion is broad and exceptional circumstances need not be shown’ before it is invoked in favour of an opponent.[4] Nevertheless, the subject-matter, scope and purpose of Part 9 is the removal of unused trade marks from the Register and this should be the starting point of any consideration of the exercise of the discretion. Where an opponent has not established that a challenged trade mark was used during the relevant period, the exercise of the discretion in favour of the opponent is not one which should be exercised lightly: there must be good reason to do so. As stated by Jacob J in Laboratoire De La Mer Trade Marks:

   There is an obvious strong public interest in unused trade marks not being retained on the registers of national trade mark offices. They simply clog up the register and constitute a pointless hazard or obstacle for later traders who are trying actually to trade with the same or similar marks. They are abandoned vessels in the shipping lanes of trade.[5]

   [3] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [35].

   [4] Ibid [69].

   [5] [2002] FSR 51 (Ch) 790, [19].

1. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited,[6] Flick J stated:

   Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[7] 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.[8] 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.[9]

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

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

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

   [9] 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. Flick J also referred to a non-exhaustive list of factors which may provide some assistance in considering the discretion, they are:

• whether there has been abandonment of the trade mark;

• whether the registered proprietors of the mark still had a residual reputation in the mark;

• whether there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;

• whether the applicant for removal had entered the market without having taking steps to ascertain from the Register whether anyone had a right to exclude their use of the mark.[10]

  [10] Ibid, [202]–[203].

1. The Opponent bears the onus of establishing that the discretion should be exercised in its favour: it is not for the Applicant to establish that it should not.[11]

   [11] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44].

2. It is declared in the Cortez declaration:

   EAC continues to use the Mark and intends to continue to use the Mark in the future. The Mark must be displayed by parties who work in partnership with or are otherwise associated with EAC and their use of [the Challenged Services]. …

   The Mark has been used by EAC since 11 November 1981 and the Mark continues to be demonstrably used by EAC in the Australian market. EAC has no intention whatsoever to vary or change the Mark in any way. Having regard to the evidence outlined above, it is my submission that significant and enduring goodwill exits in the Mark. This goodwill is extremely valuable, and EAC has a high interest in securing registration rights. Extreme inconvenience would be caused if the Mark was removed given the sustained use of the Mark in the Australian market. EAC would have to go through a time consuming and costly exercise to re-brand the ‘MULTILIST’ product and take significant steps to inform the market of this change. This would be restrictively costly and highly impractical.

3. I am bound to decide this matter on the evidence before me. The Opponent’s documentary evidence does not support the assertions upon which the above comments and submissions of the Opponent are based. I am not satisfied that the Opponent has used the Challenged Trade Mark during the Relevant Period. It follows that I am not satisfied that the Opponent has continuously used the Challenged Trade Mark since 11 November 1981. Neither does the evidence satisfy me that the Challenged Trade Mark has acquired ‘significant and enduring goodwill’. Further the use of ‘MULTILIST’ in the evidence is largely in conjunction with ‘EAC’ and often with other terms as well—such as in ‘The EAC Multilist System’. The Applicant submitted that in such uses it is ‘EAC’ that  distinguishes the services rather than ‘Multilist’.

4. There is also the suggestion contained in two documents in Exhibit E to the Cortez declaration that ‘EAC Multilist [is] currently trading as EAC Red Square – Real Estate Innovations’ and that ‘EAC Multilist [is now] known as Red Square-Real Estate innovations’. These statements suggest that the Opponent has possibly already engaged in a rebranding process.

5. There is no information before me as to whether the Applicant entered the market without having taken steps to ascertain from the Register (or anywhere else) whether anyone had a right to exclude their use of the Challenged Trade Mark. Nevertheless, the Applicant appears to have a private interest in the removal of the Challenged Trade Mark given its on-foot application to register the same trade mark for services similar to the Challenged Services.

6. Taking into account the factors discussed above, I am not satisfied that it is reasonable exercise the Registrar’s discretion not to remove the Challenged Trade Mark from the Register.

Decision

1. As the Opponent has not rebutted the allegation of non-use, the ground for removal has been established. It is not reasonable to exercise the Registrar’s discretion not to remove the Challenged Trade Mark from the Register. I decide therefore that the Challenged Trade Mark be removed from the Register after one month from the date of this decision. 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

1. The 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 and I award costs against the Opponent under s 221 in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.

Robert Wilson
Hearing Officer
Delegate of the Registrar of Trade Marks
26 May 2021