Opposition by Find Marketing Pty Ltd to application under section 92 of the Act by Find Financial Planners Pty Ltd to remove trade mark registration number 1770718 (36) Find & Device (Series) - in the name of Find...

[2019] ATMO 71

TRADE MARKS ACT 1995

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

Re:Opposition by Find Marketing Pty Ltd to application under section 92 of the Act by Find Financial Planners Pty Ltd to remove trade mark registration number 1770718 (36) – Find & Device (Series) - in the name of Find Marketing Pty Ltd

DELEGATE:

Iain Campbell Thompson

REPRESENTATION:

Opponent: Self represented

Applicant: Self represented

DECISION:

2019 ATMO 71

Trade Marks Act 1995

Opposition under section 96 to application for removal under section 92(4)(a) – Opponent states that its intention when filing the Series of Trade Marks was to use them; Applicant’s evidence does not shed light on Opponent’s intentions; further, the Opponent’s intention at the Relevant Date to use the Series of Trade Marks in Australia may, in any event, be inferred from the actual use of one or more of them. Consideration of use of one or more members of a series of trade marks.

  Opposition to removal established.  

Background0718

1.In these proceedings Find Financial Planners Pty Ltd (‘the Applicant’) applied on 23 May 2017 under the provisions of section 92(4)(a) of the Trade Marks Act 1995 (‘the Act’) for the removal of the series of trade marks which appear below in respect of all of services for which they are registered:

Registration No:         1770718

Filing Date:                13 May 2016

(‘the Relevant Date’)

Goods/Services: Class 36: Financial services; Provision  of  information  relating  to  financial services; Financing of investments; Management of investments; Agency services for the leasing of real estate property; Brokerage of real estate; Capital investment in real estate; Evaluation of real estate; Financing of real estate developments; Insurance services relating to real estate; Property sales services relating to real estate development; Provision of information relating to real estate; Provision of real estate loans; Real estate administration; Real estate agencies; Real estate appraisals (valuations); Real estate brokerage; Real estate insurance services; Rental of offices (real estate); Valuation of real estate; Advice relating to insurance; Insurance brokerage;

Insurance    services;    Insurance    services    relating    to    credit;   Life insurance; Mortgage insurance

(‘the Services’)

Trade Mark:

(‘the Series of Trade Marks’)

2.As provided for by section 96 of the Act, the owner of the Series of Trade Marks, Find Marketing Pty Limited (‘the Opponent’) filed a Notice of Intention to Oppose the application on 19 June 2017.

3.On 19 July 2017, the Opponent filed its Statement of Grounds and Particulars which, in brief, asserts that the Opponent has used one or more members of the Series of Trade Marks.

4.On 11 August 2017, the Applicant filed a Notice of Intention to Defend.

5.On 2 November 2017, the Opponent filed its Evidence in Support, this being a declaration by Warren Strybosch, founding Director of the Opponent, made on 2 November 2017, with attachments.

6.The Applicant filed Evidence in Answer on 19 February 2018, this being a declaration by Martin Harrington, Director of Applicant, with attachments, made on 19 February 2018.

7.On 17 April 2018, the  Opponent  filed  its  Evidence  in  Reply,  being  a  declaration  dated 1 April 2018 by Mr Strybosch and an undated statement by Mathew Hawker, a previous shareholder in the Opponent, to which, however, is appended corroborative material.

8.The parties have subsequently been informed of their right to be heard or to make written submissions. Neither of the parties requested to be heard nor has filed written submissions.

9.Now, in order that the Registrar may decide the matter, it has been passed to me, one of her delegates, for my decision on the written record which is comprised of those materials mentioned in the foregoing paragraphs.

Evidence

The Opponent

10.Mr Strybosch appends to his declarations various ASIC records, registrations of domain names, and webpage printouts which feature (in the main) the words “find financial planners” or, in the case of domain names, “findfinancialplanners.com.au”. Mr Strybosch states:

The Opponent, who is the registered owner of the [Series of Trade Marks], respectfully submits that by applying for and subsequently registering the [Series of Trade Marks], it has discharged its onus to show at least an intention to use the [Series of Trade Marks] in Australia (s92(4)(a)(i)). Furthermore, the Opponent

has used the [Series of Trade Marks] in Australia in relation to goods and services for which the [Series of Trade Marks] is registered since prior to at least one month before the day on which the non-use Application was filed (s92(4)(a)(iv)). There is an onus on the Applicant to prove the Opponent has not used the [Series of Trade Marks] in Australia (s92(4)(a)(iv)-(v) and/or has not used the [Series of Trade Marks] in good faith (s92(4)(a)(i)-(iii)). In both of these cases, the Applicant has not provided substantiated evidence to support either of the above points.

11.And Mr Hawker states:

In early 2007, I was approached by Warren Strysbosch to establish an online marketing business. The concept was to set up niche website business listing websites for lead generation e.g. etc 2. In September 2007 I was offered Shares in Find Pty Ltd (previously Find Marketing Pty Ltd prior to change of company details). 3. In November 2007, Warren obtained the trademark 'Find' which was the name of the business we would aim to trade under and 'Find' would be the basis for all future business names/domain names set up. 4. Over the next few years from 2007 we registered over 300 domain names with the word 'Find' at the front with the aim to have each site used for niche business listing sites. 5. As the web developer, I built websites on these domains that hooked into a large backend database for Find Pty Ltd. The point of difference was that each website would only allow listings based on the one type of business e.g. Financial Planners. 6. For the website in question, we had up to 10,000 basic listings on the website and secured many premium listings (see screenshot from archive.org as sample). This site was very much functional which is contrary to the point made by the applicants that this site was not functional.

The Applicant

12.The Applicant’s evidence does not go to the nub of these proceedings: that is, it does not establish what the Opponent’s intentions were concerning the use of the Series of Trade Marks at the Relevant Date. Mr Harrington’s declaration dwells on the issues of the Opponent’s domain name registrations, the lack domain name or business name registration of various trade marks within the Series of Trade Marks, and the appearance or non- appearance of the certain of the individual trade marks within the Series of Trade Mark when searching the Internet. However, these factors do not, per se, shed any light on what the Opponent’s intentions were concerning the use of the Series of Trade Marks at the Relevant Date.

13.The Applicant also makes various allegations about “bad faith” in the filing of the Series of Trade Marks by the Opponent. However, I am precluded from considering this: in Edwards v Liquid Engineering 2003 Pty Ltd Gordon J observed:1

Having considered the evidence led, and submissions made, I was poised to answer that question in the affirmative and uphold the appeal, on the basis that "good faith" for the purposes of s 92(4) requires no more than genuine intent to use a mark for commercial purposes; it does not involve any element of honesty or subjective good intentions: see generally E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 at [187]-[192] (examining the meaning of "good faith" under related provisions of the TMA).

14.The Applicant also makes assertions concerning the eligibility of the Series of Trade Marks for registration in terms of section 41 of the Act; again, however, these assertions do not go to the question of what the Opponent’s intentions were concerning the use of the Series of Trade Marks at the Relevant Date.

15.Finally, the Applicant supplies various printouts of the Opponent’s webpages at findfinancialplanner.com.au which feature the corresponding trade mark within the Series of Trade Marks and criticises the effectiveness, in a business sense, of the use. However,  viewed in the round, I take these criticisms to be, in essence, corroboration that that particular trade mark has been used by the Opponent (albeit not to any large extent or possibly, even, with any great effect). However, slight commercial use if it not be token use, is, as discussed at [17], below, all that is required to establish use of a trade mark.

Principles

16.Concerning the onus in these proceedings, section 100 of the Act 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;

1 [2008] FCA 970; (2008) 77 IPR 115 at [8]; (upheld on appeal in Liquideng Farm Supplies Pty Ltd v Liquid Engineering 2003 Pty Ltd [2009] FCAFC 7).

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.

17.A single bona fide use of a trade mark may  be  sufficient  establish  the  use  of  a  trade  mark: Woolly Bull Enterprises Pty Ltd v Reynolds2 and see Malibu Boats West Inc v Catanese.3

18.However, where a trade mark owner relies on only one, or a few, instances of alleged use, such acts ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof”: Nodoz Trade Mark (‘Nodoz’).4

19.The decision maker may not be persuaded by evidence that is solely from the internal files   of an opponent (Nodoz), or of a circumstantial nature: Trina Trade Mark.5

20.The relevant standard of proof that the Opponent bears is  on the  balance of  probabilities.6 In this regard, section 101 of the Act provides that if “the Registrar is satisfied that the grounds on which the application [for removal] was made have been established, the Registrar may decide to remove the trade mark from the Register …” [Stress added]

1. In Blount Inc v Registrar of Trade Marks Branson J observed:7

Where the Act requires the Registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy [1965] HCA 46; (1965) 112 CLR

517 at 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.

2 [2001] FCA 261; 107 FCR 166 at 172.

3 [2000] FCA 1141; (2000) 180 ALR 119; (2000) 51 IPR 134; [2000] AIPC 37-911.
4 [1962] RPC 1 at 7 per Wilberforce J.

5 [1977] RPC 131.
6 Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599.

7 [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37-241.

22.It is also pertinent to consider now whether the use of any trade mark within the Series of Trade Marks might also be considered to be a use of all of the trade marks within the series.

23.Section 51 of the Act provides:

51 Application—series of trade marks

(1)     A person may make a single application under subsection 27(1) for the registration of 2 or more trade marks in respect of goods and/or services if the trade marks resemble each other in material particulars and differ only in respect of one or more of the following matters:

(a)    statements or representations as to the goods or services in relation to which the trade marks are used or are intended to be used;

(b)    statements or representations as to number, price, quality or names of places;

(c)    the colour of any part of the trade mark.

(2)     If:

(a)    the application meets all the requirements of this Act; and

(b)    the Registrar is required (under section 68) to register the trade marks; he or she must register them as a series in one registration.

24.And section 7 of the Act relevantly provides:

7 Use of trade mark

(1)     If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

Note:       For prescribed court see section 190.

25.In my view, the prescriptive nature of section 51 as to the trade marks which might qualify as a series is such that, if accepted by the Registrar as constituting a series, those trade marks should also be, prima facie, considered to be substantially identical as they will vary only in matter which does not substantially affect their identity. It appears to logically follow that, if a trader has established that it has used any member of a series of trade marks, it may also be considered by the Registrar to have established the use of all (or any) of the members of that series.

Consideration

26.Section 92 of the Act relevantly provides:

92 Application for removal of trade mark from Register etc.

(1)     Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be 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.

(3)     An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register.

Note:       For prescribed court see section 190.

(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;

27.In Secondment Pty Ltd v MCI Group Holdings SA the Registrar’s delegate observed:8

The act of applying for a trade mark is prima facie evidence of an intention to use it9, or as Dodds Streeton J phrased it in Suyen Corporation v Americana International Limited10: “[A]s possession of the requisite intention is a pre- condition of entitlement to apply, it may readily be presumed from the fact of application.” Taking the intention arising from the act of filing into account, the onus may be shifted to the Applicant by making a positive statement regarding its intention to use the trade mark. In Structureco Inc v Starite Distributors Pty Ltd the Hearing Officer found:11

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

8 [2013] ATMO 71 at [9].

9 Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391 (at 401).

10 [2010] FCA 638; (2010) 87 IPR 262 at [197].

11 [2000] ATMO 31; (2000) 49 IPR 209; and see Bunter v Hobarama LLC [2005] ATMO 49; (2005) 67 IPR 216 at 222.

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.

28.In my view, with the onus as such, the Opponent has discharged that onus by affirming its intentions as at the filing date of the application and the Applicant’s evidence in answer does not establish that the Opponent lacked the requisite intention.

29.Moreover, the logic of section 92(4)(a) is such that, on a prima facie basis, if an opponent establishes use of a trade mark at any time before the period of one month ending on the day on which the non-use application was filed, it can be inferred that on the day on which the application for the registration of the trade mark was filed, the opponent intended to use the trade mark in any of the ways mentioned within section 92(4)(a).

30.The Opponent has established such use of the FIND FINANCIAL PLANNER trade mark within the Series of Trade Marks12 and it may be inferred that, in terms of my discussion of the use of a series of trade marks at paragraphs [22] to [25], above, the Opponent has used the Series of Trade Marks thus implicitly confirming its intention to use the Series of Trade Marks at the time that the application to register was filed.

31.Accordingly, the Opponent has established its opposition to the removal of the Series of Trade Marks from the Register.

Decision

32.Section 101 of the Act relevantly provides:

101 Determination of opposed application—general

(1)     Subject to subsection (3) and to section 102, if:

(a)    the proceedings relating to an opposed application have not been discontinued or dismissed; and

(b)    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.

33.The Opponent has established its opposition to the removal of the Series of Trade Marks from the Register.

12 Such use, albeit slight, is also incidentally corroborated by the Applicant’s evidence.

34.If the Registrar has been served with a notice of appeal within one month of the date of this decision, the disposition of the application for removal should be in accordance with the court’s order or direction.

Iain Campbell Thompson Hearing Officer

Trade Marks Hearings 13 May 2019