Opposition by Firstmac Limited to applications under section 92 of the Act by ZipMoney Payments Pty Ltd to remove trade mark number 1021128 (36) - ZIP - in the name of Firstmac Limited

[2018] ATMO 195

TRADE MARKS ACT 1995

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

Re:Opposition by Firstmac Limited to applications under section 92 of the Act by ZipMoney Payments Pty Ltd to remove trade mark number 1021128 (36) - ZIP - in the name of Firstmac Limited

DELEGATE:

Jock McDonagh

REPRESENTATION:

Opponent:  Rachel  De  Luchi  of  Counsel,  instructed  by  Spruson  & Ferguson

Applicant: Benjamin Fitzpatrick of Counsel, instructed by Omond & Co

DECISION:

2018 ATMO 195

Trade  Marks  Act  1995  (Cth) - Section 96 opposition to removal application – use established – trade mark to remain on Register

Background

1. This matter is a proceeding under subsection 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) in which by an application filed on 19 August 2016, ZipMoney Payments Pty Ltd (‘the Applicant’) has sought the removal from the Register of the trade mark appearing below in respect of all of the services for which it is registered:

Trade Mark No.	1021128
Trade Mark	ZIP (‘the Trade Mark’)
Registered from	20.09.2004
Services	Class 36: Financial affairs (loans)

1. On 9 February 2017, the registered owner of the Trade Mark,Firstmac Limited (‘the Opponent’) filed Notice of Intention to Oppose the removals. The statement of grounds and particulars, filed 9 March 2017, asserted that the opponent or an authorized user had used trade mark registration in Australia on the relevant goods during three year period ending on 11 November 2016 (‘the relevant period’).

1. On 30 March 2017 the Applicant filed a Notice of Intention to Defend. The parties then commenced filing evidence in accordance with the Trade Marks Regulations 1995 (‘the Regulations’).

1. I heard the matter in Canberra on 27 September 2018 as a delegate of the Registrar of Trade Marks. Rachel De Luchi of counsel, instructed by Spruson and Ferguson Patent and Trade Mark Attorneys appeared by telephone link for the Opponent. Ben Fitzpatrick instructed by Omond & Co appeared for the Applicant.

Evidence

1. The parties filed and served the following declarations in evidence:

Declarant	Status	Date, (Known as)	Exhibits
Evidence in Support
Michael Hynes	Senior Manager – Business Intelligence	7.07.17 (‘Hynes)	MH-01 to MH-07
Evidence in Answer
Peter Gray	Chief Operating Officer of Applicant	10.11.15 (‘Gray)	PG-1 to PG-9

Discussion

1. Section 92 relevantly states:

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)    … ;

(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.

1. Section 100(1)(c) of the Act provides that the opponent bears the onus of rebutting the allegation made against it under s.92(4)(b), which it may do by, inter alia, establishing that the Trade Marks, (or, per s 100(3)(a), the Trade Marks with additions or alterations not substantially affecting its identity), were used in good faith during the relevant period. I proceed on the basis that the relevant standard of proof is on the balance of probabilities.

1. The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co1.  A single bona fide use of the trade mark during the non-use period is sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds2. However, Wilberforce J, in Nodoz Trade Mark3, 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.”

1. The tribunal may not be persuaded by evidence that is solely from the internal files of the opponent: Nodoz, supra; or of a circumstantial nature: Trina Trade Mark4; although one invoice, if genuine, will suffice: Geo W McPherson v Remington5.

1. As mentioned in [2], above, the relevant period for the purposes of s 92(4)(b) is the three years ending on 18 July 2016.

Trade Mark Use

1. The deponent in Hynes is the Senior Manager – Business Intelligence of the Opponent. He states, and I accept, that he has the knowledge of the relevant aspects of the Opponent’s business affairs in relation to the Trade Mark.

1. Hynes, at [7] states that the Opponent is part of a group of companies that is Australia’s largest non-bank lender.

1 [1982] FSR 72.

2 [2001] FCA 261; (2001) 51 IPR 149 at [17].
3 (1962) RPC 1 at 7 (Nodoz).
4 [1977] RPC 131.

5 (1999) 47 IPR 636

1. One of the Opponent’s loan products is the ZIP home loan, which is essentially a line of credit provided through an interest-free VISA debit card. Borrowers deposit their entire salary into the loan account and use the VISA for all personal expenditure. See Hynes at [18] and Exhibit MH-02. The loan product has been offered since September 2005: Hynes at [11].

1. At [17] Hynes advises that ZIP loans are ‘not currently being offered to new customers,’ but does not specify the date the product ceased to be offered. In Grey, for the Applicant, the declarant advises that extracts from the broker sheets exhibited by Hynes at MH-03 and MH-04 were subjected to internet searches that indicate that the ZIP loan product ceased to be offered by the Opponent in the period between 24 January 2013 and 6 February 2013.

1. Hynes at [12] states that the Opponent has no intention to abandon the Trade Mark, and believes that it will continue to be used by the Opponent in the future.

1. At [17], Hynes states that the Opponent continues to manage and service ZIP loans under the Trade Mark currently held by its existing customers. As at 11 November 2016, the Opponent had over 1500 ZIP loans with some tens of millions of dollars owing.

1. Exhibit MH-06 to Hynes provides an example of a redacted loan statement issued to a customer on 1 February 2016, bearing the Trade mark in the ‘product description’ area of the statement.

1. Exhibit MH-05 to Hynes is said to be an oral and visual presentation to brokers delivered during October and November 2013, and bearing the Trade Mark.

1. Ms De Luchi submitted that the exhibits to Hynes, mentioned above, were sufficient to establish use of the Trade Mark pursuant to the authorities I cited in [8] to [10] above.

1. Mr Fitzpatrick submitted that there was no sufficient use, as required by Nodoz, demonstrated during the relevant period because only MH-06 arguably showed use during the relevant period. There was no corroborated evidence of the other exhibits,

dated prior to the relevant period, that in Hyne were said to have been distributed during the relevant period.

1. Given the issues raised in the Evidence in Answer regarding the specific date of the cessation of the ZIP loan product, Mr Fitzpatrick submitted that the proper course would have been for the Opponent to file evidence in reply to clarify when it ceased offering the Zip loan product. He submitted that a decision to cease offering a loan product to customers could not be reached without significant documentation recording that process.

2. Ms De Luchi submitted that the rights arising from registration of the Trade Mark should not be confined to the giving of new loans but must encompass the ongoing management of existing customer loans, citing Magnavox (Aust) Pty Ltd’s Trade Mark.6 She submitted that both the lending of money and the management of financial affairs relating to loans clearly fall within the scope of ‘financial affairs (loans)’ and accordingly, the Trade mark is used frequently in relation to the loan service throughout the loan period, including on statements, correspondence and other information issued by the Opponent.

1. I have taken into account the evidence and submissions filed in these proceedings. While I note that the Opponent has been economical in its provision of evidence in support of its opposition, I am satisfied that it meets the minimum requirements of establishing bona fide use of the Trade Mark in the relevant period.

1. The totality of the evidence demonstrates that the Opponent has been offering loan products under the Trade Mark from September 2005 and February 2013. The Opponent has continued to manage the ZIP product since then and at least until 11 November 2016, with correspondence and loan statements bearing the  Trade Mark.

1. While only one statement issued during the relevant period and relating to a loan provided under the Trade Mark has been adduced in evidence, I am satisfied that it is

6 (1964) 34 AOJP 2075 at 2078 where it was stated that, ‘the rights arising from the registration of a trade mark should not be confined to the stage of technological development of goods specified when the mark was registered.’

representative of the approximately 1743 accounts extant during the relevant period, and satisfies the test in Geo W McPherson v Remington, supra.

1. I note in passing that there is no requirement for corroboration of evidence under the Act or Regulations. Indeed, reg 21.15 (4) expressly provides that the Registrar is not bound by the rules of evidence. In this matter, I have assessed the reliability and probative value of the evidence before me and I have given weight to the evidence accordingly.

Decision

1. The evidence satisfies me that there has been genuine commercial use of the Trade Mark with respect to the specified services in the registration during the relevant period. The grounds for removal have not been established and I therefore refuse to remove the Trade Mark.

Costs

1. As the successful party, the Opponent is entitled to its costs and I award costs against the Applicant in accordance with Schedule 8 of the Regulations.

   Jock McDonagh Hearing Officer

   Trade Marks Hearings 04 December 2018