Opposition by Kevin Robinson to application under section 92 of the Trade Marks Act 1995 (Cth) by Little Wings Limited to remove trade mark number 1846646 (classes 39, 41) – LITTLE WINGS with aeroplane device - in...
[2021] ATMO 11
•18 February 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Kevin Robinson to application under section 92 of the Trade Marks Act 1995 (Cth) by Little Wings Limited to remove trade mark number 1846646 (classes 39, 41) – LITTLE WINGS with aeroplane device - in the name of Kevin Robinson
Delegate: | Nicholas Barbey |
Representation: | Opponent: One IP International Pty Ltd Applicant: Shauna Ross of counsel instructed by Sparke Helmore |
Decision: | 2021 ATMO 11 Trade Marks Act 1995 (Cth) – application under section 92 – removal sought for entire registration - opponent’s evidence does not show intention in good faith to use or actual use of the trade mark during the relevant period – exercise of registrar’s discretion not appropriate – trade mark to be removed from the register |
Background
Kevin Robinson (‘Opponent’) is the owner of the following Australian trade mark registration:
Trade Mark: (‘Trade Mark’)
Registration Number: 1846646
Filing Date: 23 May 2017
Specification: Class 39: Air passenger transport services; Air transport; Air transportation services; Transport; Transport by air
Class 41: Organising charitable fundraising events being the provision of sporting and cultural services; Sporting activities
(‘Registered Services’).
On 15 May 2018, Little Wings Limited (‘Applicant’) filed an application based on s 92(4)(a) of the Trade Marks Act 1995 (Cth) (‘Act’) seeking complete removal of the Trade Mark from the Trade Marks Register (‘Register’).
The Opponent filed a notice of intention to oppose removal on 28 May 2018 and a Statement of Grounds and Particulars (‘SGP’) on 25 July 2018, later rectified by this office. A notice of intention to defend was filed by the Applicant on 2 November 2018.
The evidence stages followed and they comprised of:
| Evidence in Support |
|
| Evidence in Answer |
|
| Evidence in Reply (‘EIR’) |
| · Declaration of Olaf Kretzschmar (Managing Director and an IP Consultant of One IP International Pty Ltd) dated 15 October 2019 with Exhibits TP-1 to TP-2 (‘Kretzschmar Declaration’). |
The Applicant requested to be heard and filed written submissions on 6 July 2020 (‘Applicant’s Submissions’). The Opponent did not file written submissions and took no further part in the removal proceeding. As a delegate of the Registrar of Trade Marks, I heard the matter by video conference on 9 July 2020. Shauna Ross of counsel appeared on behalf of the Applicant.
The relevant provisions
Part 9 of the Act concerns the removal of trade marks from the Register for non-use. Section 92 of the Act relevantly provides:
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 onus is on the Opponent to rebut the non-use allegation made under s 92(4)(a). This is specified in s 100 of the Act which relevantly provides:
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
(ii) 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
…
Note 1: If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).
Section 101 provides the Registrar with the discretion to remove the Trade Mark from the Register in respect of any, or all, of the Registered Services. This includes the ability to decline to remove the Trade Mark from the Register even if the grounds on which the removal application was made are established.[1]
[1] The Act s 101(3).
Grounds and onus
The application for the Trade Mark was filed on 23 May 2017 and the removal application was filed on 15 May 2018. As such, the Applicant’s allegations may be contextualised as follows:
i) On 23 May 2017 (‘Relevant Date’), the Opponent had no intention in good faith to use, authorise use of or to assign the Trade Mark in Australia; and
ii) The Opponent did not use, nor did he authorise use of, the Trade Mark in good faith in Australia in relation to the Registered Services at any time before 15 April 2018 (‘Relevant Period’).
The Opponent bears the onus of rebutting the non-use allegation. The simplest route to rebut the non-use allegation under s 92(4)(a) is to establish good faith use of the Trade Mark in relation to the Registered Services during the Relevant Period. Alternatively, the non-use allegation can be rebutted if the Opponent establishes that, on the Relevant Date, he had the intention in good faith to use the Trade Mark in respect of the Registered Services.
I proceed on the basis that the standard of proof required is the ordinary civil standard based on the balance of probabilities.[2]
[2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] in respect of oppositions under s 52 of the Act.
Evidence
Blanket claim to confidentiality
The Robinson and Kretzschmar Declarations each contain a blanket statement that their contents are confidential. Such statements are clearly incompatible with parts of their declarations which discuss publicly available records from the Australian Securities & Investments Commission as well as publicly accessible information on websites.
While the Opponent’s interests in preserving his confidential information is acknowledged, the Registrar must provide reasons for her findings. In discharging this duty, information claimed to be confidential may inevitably require discussion. This is particularly relevant when the Opponent has made no effort to identify the information alleged to be confidential. Accordingly, where such discussion is unavoidable and, providing it is possible, broad non-specific statements will be used to minimise the potential risk of divulging any commercially sensitive information.
The Opponent’s evidence
The Robinson Declaration details the Applicant’s incorporation and the creation of the Trade Mark. Relevantly, around February 2011, the Opponent founded a charitable organisation with the purpose of transporting children located in regional New South Wales to major centres for medical treatment. On 23 November 2011, the charitable organisation was registered as a public company under the name ‘Little Wings Limited’ (being the Applicant).
The Opponent was a founding director of the Applicant and subsequently was appointed as its company secretary and Chief Executive Officer (‘CEO’). The Opponent was not remunerated for performing any of these roles other than receiving a ‘token salary’ as CEO in the 2014-15 financial year.[3] The Opponent asserts that his efforts in growing the Applicant directly contributed to it achieving significant revenue across the 2014-18 financial years. On this basis, the Opponent believes that ‘the business and brand was [his] conception and successfully built by [himself] as the creator and founder’.[4]
[3] Robinson Declaration, [7].
[4] Robinson Declaration, [12].
In addition to his role with the Applicant, the Opponent explains that between 2011 and 2013 he was a full-time employee of his own business, PKC Management Services Pty Ltd (‘PKC’). The Opponent contends that he was never employed by the Applicant and submits that he was not required to report to anyone given his position as the Applicant’s CEO.
KR Creative (‘KRC’) was engaged by the Opponent on 27 April 2012 to design a logo incorporating the words ‘little wings’ that would be used as a trade mark on the Applicant’s website and business stationery. The Opponent asserts that he was acting in his personal capacity when engaging and paying for KRC’s services. The logo created by KRC forms the basis of the Trade Mark’s representation. As the Applicant’s then CEO, the Opponent states that he granted an implied licence to the Applicant to use this logo as a trade mark.
In May 2015, the Opponent was terminated from the Applicant based on allegations which he characterises as being ‘false, unfounded and unproven’.[5] Suffice to say, the termination was acrimonious and the relationship between the parties rapidly deteriorated. The Opponent submits that the Applicant’s board failed to honour certain obligations so he revoked the implied licence to use the Trade Mark. In doing so, the Opponent intended to provide the same services using the Trade Mark in connection with a soon to be established charity named ‘Wings4Kidz’.[6] Founded by the Opponent, Wings4Kidz commenced operation in December 2015 and has since matured into a successful charitable organisation.
[5] Robinson Declaration, [14].
[6] Robinson Declaration, [14].
The Opponent declares that, at the time of filing the application for the Trade Mark, he had an intention in good faith to authorise the use of the Trade Mark in Australia in relation to all the Registered Services. Use of the Trade Mark by the Opponent would occur as soon as the Applicant ceased its use. To achieve this, the Opponent’s representative issued a letter of demand to the Applicant on 13 February 2018 (‘Demand Letter’) outlining the Opponent’s claim to the Trade Mark and asserting the implied licence to use the Trade Mark was revoked upon the Opponent’s termination.[7] The Opponent has not prosecuted his claim further due to the prohibitive legal costs involved as well as an unforeseen personal matter. Nevertheless, the Opponent maintains that he is the owner of the Trade Mark given he commissioned its design and bore the associated expenses.
[7] Robinson Declaration, [19].
The Kretzschmar Declaration responds to the Koller Declaration. In Mr Kretzschmar’s view, several statements in the Koller Declaration are based on opinions rather than facts given Ms Koller had no direct knowledge of the Applicant prior to her appointment in April 2014. He further submits that the Opponent maintained direct control over the Applicant given it was allegedly funded by PKC as well as the Opponent in his personal capacity.[8] Mr Kretzschmar echoes the Robinson Declaration in asserting that the Opponent acted in his personal capacity when creating and dealing with the Trade Mark.
The Applicant’s evidence
[8] Kretzschmar Declaration, [8].
The Koller Declaration provides historical information regarding the Applicant and its use of the Trade Mark. In Ms Koller’s experience, the Applicant is solely in control of its financial activities and responsible for the provision of the Registered Services. As such, key decisions concerning the Applicant’s financial activities or services are made by the Applicant’s CEO in consultation with, and approval of, the Applicant’s board of directors.
Ms Koller explains that a style guide regulating use of the Trade Mark was created by the Applicant’s Marketing and Events Manager around mid-2015 (‘Style Guide’). This guide remained in effect until approximately December 2018 when the Applicant ceased use of the Trade Mark. To the best of her knowledge, the use of ‘little wings’ or the Trade Mark has never been subject to the control or authorisation of any individual or third party. To this end, Ms Koller notes the Applicant has been the registrant of the domain name littlewings.org.au which links to a website that features the Trade Mark. The Applicant has operated the website since at least December 2012 and is listed next to the copyright notice appearing on the website.
Contrary to the Robinson Declaration, Ms Koller asserts that the Opponent engaged KRC on behalf of the Applicant. Reference is made to an invoice issued by KRC which lists the client as ‘Little Wings’ and ‘[email protected]’ as the contact email which, according to Ms Koller, belonged to one of the Applicant’s founding directors. The Koller Declaration clarifies that PKC performed ‘administrative tasks’ for the Applicant and was paid management fees in return.
The Koller Declaration discusses the Applicant’s termination of the Opponent. At the time of the Opponent’s termination, the Applicant understood it would retain continued ownership and use of the Trade Mark. Ms Koller points out that around this period, the Opponent requested to be dissociated from the Applicant. In June 2016, the Opponent emailed the Applicant to formally revoke use of his personal name and image by the Applicant but did not mention the Trade Mark.[9] According to Ms Koller, the Applicant would have opposed the Opponent’s application for the Trade Mark if it had been put on notice.
[9] Koller Declaration, [39]-[40].
Discussion
Use of the Trade Mark
It is common ground between the parties that the Trade Mark was used in relation to the Registered Services during the Relevant Period. Based on the evidence filed, I am satisfied that such use has occurred. Where the parties diverge is with respect to whether this use inured to the benefit of the Opponent or the Applicant. If it is the former, the Opponent may rely on same to rebut the non-use allegation whereas if it is the latter, then it will be of no assistance.
The SGP states:
The Opponent has used Trade mark no. 1846646 since 2012. The mark has also been used by Little Wings Ltd since 2012 th[r]ough an implied [licence] which was derived from the Opponent’s involvement as founder and CEO of the charity.
The Opponent registered Little Wings Ltd as a charity in 2011. The Opponent’s work was personally funded by the [sic] himself and during this time he was a full-time employee in his own business, PKC Management Services Pty Ltd. As the founder and CEO of Little Wings Ltd, the Opponent was not an employee of Little Wings Ltd and he did not report to anyone within Little Wings Ltd.
Trade mark no. 1846646 is a composite mark which is copyright protected by the Opponent. The Opponent hired KR Creative in 2012 to develop a composite mark from a concept supplied to them by the Opponent. Every aspect of the development process was handled by the Opponent and KR Creative. The final version was approved by the Opponent by email on 30 May 2012. This work was completely paid for by the Opponent and the Opponent owns the copyright. The Opponent has never divested himself of this ownership and retains his ownership today.
Trade mark no. 1846646 has been used since 2012 by the Opponent. Any use of the composite mark by Little Wings Ltd was by way of implied licence due to the Opponent’s role as CEO of Little Wings Ltd. Such implied licence ended from the moment the Opponent was no longer CEO of Little Wings Ltd and he ceased his involvement with Little Wings Ltd. Any previous implied licence to use the mark was no longer in effect at the registration date of the mark.
The Opponent’s contentions on use are thus two-fold. Namely, a) he authorised the Applicant’s use of the Trade Mark during the Relevant Period and b) he contemporaneously used the Trade Mark in his personal capacity since 2012.
a) Did the Opponent authorise the Applicant’s use?
The Opponent contends that he is the owner of the Trade Mark (and thus can authorise its use) because he commissioned and paid $4,169 to KRC to create it. This exchange with KRC was allegedly performed in his personal capacity. To substantiate this, reliance was placed on an email dated 5 June 2012 from KRC to the Opponent attaching design proofs featuring the Trade Mark.[10] The email’s subject line was ‘Little Wings Stationery v1’ and it was sent from ‘[email protected]’ to ‘[email protected]’. The email states:
Hi Kevin
Please find attached a couple of versions of the letterhead and business card as well as both logos on the website.
Business Cards - i have shown the logo with grey wording as well in case you would like to have silver writing on the front
cheers
Kate
[10] See Exhibit TP-10 to the Robinson Declaration. The SGP refers to the ‘final version’ approval email dated 30 May 2012, however, this email did not form part of the evidence filed.
In my view, this email does not support the Opponent’s ownership claim nor demonstrates his capacity to authorise the Applicant’s use of the Trade Mark. At most, it indicates the Opponent was involved in reviewing potential versions of the Trade Mark. Without further contextualisation, the email constitutes an isolated piece of correspondence and provides no cogent basis to conclude that the Opponent is the owner of the Trade Mark.
Leaving to one side the absence of any evidence before me of a written copyright agreement between KRC and either of the parties,[11] several difficulties emerge from the Opponent’s assertion that he is the owner of the Trade Mark. First, the email address to which the design proofs were sent, being ‘[email protected]’, suggests that the Opponent was acting on the Applicant’s behalf when dealing with KRC. Secondly, the Opponent’s claim that he personally paid KRC $4,169 was not substantiated by the evidence filed. No tax invoice issued by KRC to either the Opponent or PKC has been provided nor has any payment receipt been supplied. Conversely, the Applicant’s evidence contains a tax invoice issued by KRC to the Applicant, which sets out expenditure related to website and stationery design services totalling $4,169.[12] Thirdly, at no time between the Opponent’s termination in 2015 and the registration of the Trade Mark in January 2018 did he notify the Applicant of his alleged ownership of the Trade Mark. The Opponent’s absence of notification is apparent notwithstanding the Applicant’s continued use of the Trade Mark until December 2018 and the Opponent’s email to the Applicant in 2016 to formally revoke ‘all media rights permission for the use of my name or image’ in relation to promoting, endorsing or marketing the Applicant.[13] Fourthly, the evidence filed indicates that the Applicant has been the registrant of littlewings.org.au since at least November 2012 without any objection from the Opponent who was listed as the ‘registrant contact name’ between 2012 and 2014.[14] At the hearing, Ms Ross highlighted that listing the Opponent as the contact name but registering the domain name in the Applicant’s name typifies the inconsistency of the Opponent’s ownership claims.
[11] See generally s 35 of the Copyright Act 1968 (Cth) which broadly provides that the author (ostensibly being KRC) of an artistic work (i.e. the Trade Mark) would be the first owner of the copyright unless an agreement to the contrary existed. Section 196(3) of the Copyright Act 1968 (Cth) further provides that an ‘assignment of copyright (whether total or partial) does not have effect unless it is in writing signed by or on behalf of the assignor’.
[12] See Annexure RK-G to the Koller Declaration.
[13] See Annexure RK-I to the Koller Declaration.
[14] See Annexure RK-E to the Koller Declaration.
Finally, the general narrative of personal ownership advanced by the Opponent directly conflicts with his disclosure obligations as a director of the Applicant. The Applicant’s Submissions emphasised that clause 66 of the Applicant’s constitution stipulates that every director shall observe s 191 of the Corporations Act 2001 (Cth). This provision states that a director who has a material personal interest in a matter that relates to the affairs of the company must give the other directors notice of the interest as soon as practicable. Given its centrality to the Applicant’s fundraising initiatives and corporate identity, it is plausible that the alleged ownership of the Trade Mark constitutes a material personal interest that relates to the affairs of the Applicant.[15] The Opponent has provided no evidence of any disclosure having been made.[16] Indeed, the evidence indicates that the Opponent never communicated his alleged ownership of the Trade Mark to anyone and the Applicant only became aware of the dispute concerning the Trade Mark when it received the Demand Letter.
[15] The Applicant’s Submissions highlight that the delegate in Jewelscan Pty Ltd v Phenix Jewellery Pty Ltd [2012] ATMO 85, ‘proceeded on the basis that the ownership and intentions with respect to a trade mark were matters to which section 191 of the Corporations Act applied’. I note the expression ‘material personal interest’ is not defined in the Corporations Act 2001 (Cth). In McGellin v Mount King Mining NL (1998) 144 FLR 288, Murray J observed that a material interest is one which has the ‘capacity to influence the vote of the particular director upon the decision to be made’.
[16] There is no evidence or information that indicates any of the exceptions listed in s 191(2) of the Corporations Act 2001 (Cth) would apply.
For the above reasons, whatever involvement the Opponent had in the creation and subsequent use of the Trade Mark, it is more probable than not that it was undertaken in his capacity as a director of the Applicant. Consequently, I am satisfied that the Opponent did not personally own the Trade Mark based on the evidence before me. In this context, the Opponent lacks the underlying capacity to authorise the use of the Trade Mark and thus the benefit of the Applicant’s use would not inure to the Opponent.
For completeness, even if I were to accept that the Opponent is the owner of the Trade Mark, I am not satisfied that the Applicant was an authorised user within the meaning of the Act such that its use of the Trade Mark can be attributed to the Opponent.[17]
[17] The Act s 7(3).
Section 8 of the Act provides:
Definitions of authorised user and authorised use
(1) A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.
(2) The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.
(3) If the owner of a trade mark exercises quality control over goods or services:
(a) dealt with or provided in the course of trade by another person; and
(b) in relation to which the trade mark is used;
the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.
(4) If:
(a) a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and
(b) the owner of the trade mark exercises financial control over the other person's relevant trading activities;
the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.
(5) Subsections (3) and (4) do not limit the meaning of the expression under the control of in subsections (1) and (2).
The text of s 8 makes it clear that ‘control’ forms a pivotal aspect of establishing authorised use. The degree of control required to satisfy s 8 of the Act was considered in Lodestar Anstalt v Campari America LLC wherein Besanko J observed:
[C]ontrol in s 8 means actual control in relation to the use of the trade mark and it means actual control in relation to the trade mark from time to time … Control involves questions of fact and degree as does the notion of a sufficient connection. There must be control as a matter of substance. For example, I do not think that it could be suggested that the mere fact that the registered owner granted a licence or revocable authority to use the trade mark would be sufficient without more established control within s 8.[18]
[18] [2016] FCAFC 92, [97] (emphasis added).
In the present matter, the evidence is devoid of particulars regarding what, if any, control the Opponent purportedly exercised over the Applicant’s use of the Trade Mark. The Kretzschmar Declaration baldly states that the Opponent ‘managed every aspect of day to day decision making’ for the Applicant and had ‘direct control’ over the Applicant as it was funded by the Opponent and PKC.[19] No further information or documentary evidence has been provided. The Robinson Declaration is also silent on this issue. As Besanko J’s observation makes clear, the alleged existence of a licence is insufficient without more to conclude that actual control existed. In this regard, the Opponent is unable to rely on the Style Guide as an example of control because this guide does not refer to the Opponent and is dated after the Opponent’s termination. Given no other documents or examples have been provided, I am not able to discern what control the Opponent may have exerted over the Applicant’s use. Further, the fact that the Opponent was a director of the Applicant provides no basis to infer that they operated with a unity of purpose.[20] The former is an individual whereas the latter is a public company that is required to have at least two other directors in addition to the Opponent.[21]
[19] Kretzschmar Declaration, [8]-[9].
[20] Cf Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100, [45].
[21] Corporations Act 2001 (Cth) s 201A(2).
Accordingly, irrespective of who owned the Trade Mark, I am satisfied on the evidence before me that the Applicant’s use of the Trade Mark would not amount to authorised use within the meaning of the Act.
b) Did the Opponent personally use the Trade Mark?
The Opponent concedes that he has not used the Trade Mark since being terminated from the Applicant in 2015[22] and there is no evidence of the Opponent using the Trade Mark in his personal capacity prior to this event. In this regard, I do not consider any use of ‘little wings’ solus would constitute use of the Trade Mark by the Opponent prior to the Applicant’s incorporation in November 2011. This is because the aeroplane device present in the Trade Mark is not a mere embellishment nor is it an illustration of the words.[23] Instead, the aeroplane device is a significant addition that substantially affects the identity of ‘little wings’ solus.[24]
[22] Robinson Declaration, [15], [16] & [23].
[23] Cf E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, [69].
[24] The Act s 7(1).
Given my finding that there was no authorised use, the Opponent has failed to establish that it has used the Trade Mark during the Relevant Period. I turn now to consider whether the Opponent had an intention in good faith to use the Trade Mark on the Relevant Date.
Intention in good faith to use the Trade Mark
Pursuant to s 100 of the Act, the onus falls to the Opponent to establish an intention to use the Trade Mark on the Relevant Date. The threshold for discharging this onus is low and simply applying for the Trade Mark is prima facie evidence of an intention to use it.[25] To this end, the delegate’s observations in Structureco Inc v Starite Distributors Pty Ltd are apposite:
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.[26]
[25] Aston v Harlee Manufacturing Co [1960] HCA 47, [21].
[26] [2000] ATMO 31 (emphasis added).
Here, the Opponent has filed the application and explicitly declared that he had an intention in good faith to authorise use of the Trade Mark as at the Relevant Date.[27] Taken together, this is sufficient to shift the onus from the Opponent to the Applicant.
[27] Robinson Declaration, [24].
The Applicant’s Submissions pressed two lines of argument regarding the Opponent’s state of mind. First, it was submitted that the Opponent had no intention to use the Trade Mark at the Relevant Date. The absence of intention is reflected in the fact that post termination, the Opponent channelled his personal and financial efforts into devising a ‘memorable narrative’ for Wings4Kidz and establishing its associated infrastructure. The Applicant contends that if the Opponent’s intention was to resume use of the Trade Mark, it is counterintuitive to craft a detailed narrative and invest significant effort into a temporary measure. Alternatively, it was submitted that the Opponent had no intention in good faith to use the Trade Mark. In the Applicant’s view, the absence of a good faith intention is made plain by the Opponent’s post-termination conduct including the specific demands set out in the Demand Letter.
I do not accept the first line of argument. The mere fact that the Opponent founded Wings4Kidz, crafted a detailed origin story and provided the Registered Services under the Wings4Kidz brand does not mean the Opponent possessed no intention to use the Trade Mark at the Relevant Date. In addition to the Opponent waiting for the Applicant to cease use of the Trade Mark, several viable explanations may account for the existence of Wings4Kidz. For example, the Applicant may have intended to use Wings4Kidz as a sub-brand to appeal to different corporate sponsors, in different localities or to dissimilar market audiences. Without more, it cannot be inferred that the Opponent lacked an intention to use the Trade Mark based solely on the existence of Wings4Kidz and any success it may have experienced since its inception.
As regards to the second line of argument, the Applicant’s prospects of success turn on what constitutes an intention in good faith. In Edwards v Liquid Engineering 2003 Pty Ltd, Gordon J noted:
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).[28]
[28] [2008] FCA 970, [8] (emphasis added).
This interpretation was approved by the Full Court of the Federal Court of Australia in Liquideng Farm Supplies Pty Ltd v Liquid Engineering 2003 Pty Ltd.[29] It follows that the chequered history shared by the parties does not automatically deprive the Opponent of having an intention in good faith to use the Trade Mark at the Relevant Date.
[29] [2009] FCAFC 7, [56]-[57].
The Applicant’s Submissions contend that the Opponent lacked an intention in good faith to use the Trade Mark for commercial purposes because he possessed an ‘ulterior purpose’[30] in making the application for the Trade Mark. The ‘ulterior purpose’ was identified in the Applicant’s Submissions as being the application for the Trade Mark would empower the Opponent with leverage to exert influence over the Applicant with a view to deposing the Applicant’s Board and recuperating financial losses incurred.
[30] Ibid [9].
Relevantly, the Applicant points to the following documentary evidence as illustrating the Opponent lacked an intention in good faith to use the Trade Mark:
i. The Demand Letter threatened legal proceedings unless certain demands were complied with. In short: the first demand was for the Applicant to refrain from using the Trade Mark; the second demand sought significant financial compensation in return for a licence to use and the third demand required the Applicant to allow the Opponent to select and appoint a new board of directors. Importantly, the demands were particularised as alternatives, whereby the satisfaction of any demand was sufficient to avoid the institution of legal proceedings.
On 5 December 2018, the Opponent published his ‘side of the story’ concerning his termination on the blog ‘ This publication reveals that the Opponent retains significant resentment towards the Applicant’s board of directors. The publication states that the Opponent’s termination left him with ‘no safety net’, has deprived him of ‘the most important contribution in [his] life – Little Wings’ and has resulted in him being ‘discarded like a piece of garbage’. Further it mentions that the Opponent ‘gave the Board 7 days to resign’ in July 2015 but they declined to do so. The publication proceeds to heavily criticise certain company officers of the Applicant and asserts that a new board of directors must be appointed because ‘the current Board are not worthy of the positions they hold’. However, despite discussing numerous topics at length, the publication is conspicuously silent with respect to addressing the Opponent’s alleged ownership of the Trade Mark.
There is a notable absence of any complaint by the Opponent of the Applicant’s use of his Trade Mark prior to its registration. As mentioned at [24] of this decision, the Opponent communicated to the Applicant on at least two occasions that use of his name and image was not to be associated with the Applicant. Tellingly, the Opponent did not mention his alleged Trade Mark rights and dispute concerning same until the Demand Letter was issued.
[31] See Annexure RK-J to the Koller Declaration.
In my view, the evidence put forward by the Applicant regarding the Opponent’s lack of good faith intention has merit. The Opponent’s repeated attempts to remove the Applicant’s board of directors prior to and after registration of the Trade Mark are telling and indicate his intention in applying for registration of the Trade Mark was not driven by commercial purposes. Coupled with the fact that the Opponent has still not used the Trade Mark, despite providing the same services as the Registered Services through Wings4Kidz, there is genuine doubt as to whether the Opponent possessed an intention in good faith to use the Trade Mark at the Relevant Date.
Crucially, the evidence put forward by the Applicant has gone unanswered. No additional information or evidence of a genuine intention to use the Trade Mark has been supplied by the Opponent. The EIR does not expand on the Opponent’s intention at the Relevant Date nor does it meaningfully seek to refute the propositions put forward by the Applicant. By declining to file any written submissions and attend the hearing, the Opponent elected to provide no clarification as to his intention in applying for registration of the Trade Mark. By itself, this inaction does not establish that the Opponent lacked a good faith intention on the Relevant Date.[32] However, it is a consideration which enables ‘the drawing of an inference to that effect, if that inference is available from other evidence’.[33] Here, I consider the evidence mentioned at [47] of this decision provides a sufficient basis to infer that the Opponent lacked an intention in good faith to use the Trade Mark.
[32] Nikken Wellness Pty Ltd v van Voorst [2003] FCA 816, [61].
[33] Ibid.
Accordingly, I am satisfied that on the Relevant Date, the Opponent had no intention in good faith to use, authorise the use of or assign the Trade Mark.
Registrar’s discretion
As noted above, the Registrar has a broad discretion not to remove an unused trade mark if the Registrar is satisfied that it is reasonable to do so. Notably, it has been recognised that for the Registrar’s discretion to operate in favour of the registered owner, that person bears the onus of positively satisfying the Court that it was reasonable that the trade mark should not be removed.[34]
[34] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44].
The Opponent has not requested an exercise of discretion. There is nothing before me which indicates that the discretion ought to be exercised in favour of the Opponent to allow the Trade Mark to remain on the Register. As such, I decline to exercise the discretion.
Decision
The ground for removal under s 92(4)(a) of the Act has been established. I direct that trade mark registration number 1846646 be removed from the Register one month from the date of this decision. In the event of an appeal from this decision, trade mark registration number 1846646 shall not be removed from the Register until the appeal has been discontinued or dismissed, or in the event of a decision from the court, trade mark registration number 1846646 will be subject to that decision.
Costs
Both parties have sought costs. I see no reason to depart from the general rule that costs follow the event. Accordingly, I award costs against the Opponent under s 221 of the Act in accordance with the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth).
Nicholas Barbey
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
18 February 2021
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