Opposition by LTFT Pty Ltd as Trustee for the Davey Family Trust No. 2 to registration of trade mark application number 1996385 (classes 37 and 42) – NEED I.T. FIXED? SUPERFIXED, SUPERFAST! - in the name Geek Group... - [2021] ATMO 84

TRADE MARKS ACT 1995

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

ReOpposition by LTFT Pty Ltd as Trustee for the Davey Family Trust No. 2 to registration of trade mark application number 1996385 (classes 37 and 42) – NEED I.T. FIXED? SUPERFIXED, SUPERFAST! - in the name Geek Group Pty Ltd.

Delegate: Nicole Worth
Representation: Applicant: Julian Zmood of Counsel, instructed by Alder IP.
Opponent: Scott Coulthart, Mills Oakley lawyers.

Decision: 2021 ATMO 84
Trade Marks Act 1995 (Cth) – opposition to registration of trade mark – s 58 ground of opposition – applicant was not the owner when the application was filed – cannot be cured by later assignment – registration refused.

Background

1. This decision is pursuant to an opposition brought by LTFT Pty Ltd as Trustee for the Davey Family Trust (‘Opponent’) under s52 of the Trade Marks Act 1995 (‘Act’) to registration of the trade mark detailed below in the name of Geek Group Pty Ltd (‘Applicant’)

Trade Mark:             Need I.T. Fixed? SuperFixed, SuperFast! (‘Trade mark’)
Application No.:        1996385
Filing Date:               16 March 2019
Services:Classes 37 and 42, specifying a wide range of computer related services. The full specification is at Attachment A of this decision.

2. The Trade Mark was accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks on 2 September 2019. The Opponent filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars (‘SGP’) on 28 November 2019, which was later rectified on 8 January 2020. The Applicant filed a Notice of Intention to Defend on 10 February 2020.

3. The parties filed evidence in due course, discussed in more detail below, and following a request from the parties the matter was set down to be heard. The hearing was before me, a delegate of the Registrar of Trade Marks, on 19 May 2021. The Applicant was represented by Julian Zmood of counsel, instructed by Alder IP, who made verbal and written submissions on its behalf. The Opponent was represented by Scott Coulthart of Mills Oakley Lawyers, who made verbal and written submissions on its behalf.

4. Any references to parts, sections or regulations, below, are references to parts, sections or regulations of the Act or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), unless otherwise indicated.

Grounds of Opposition, Onus and Standard of Proof

5. In its SGP, the Opponent nominated grounds of opposition under ss 43, 58, 60 and 62A; however at the hearing it indicated it did not pursue the ground under s 43. All other grounds were pursued, although as will become evident it is necessary only that I address the ground under s 58.

6. The onus of proof in an opposition rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The rights of the parties are to be determined as at the date of the application [3] which is generally, but not always, the filing date.[4] Here the relevant date is the filing date, being 16 March 2019.

[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ).

[4] See sections 6, 12, and 72 of the Act.

Evidence

7. The evidence filed in this matter comprises declarations by the following persons, as set out below.

Evidence in support
Elizabeth Tinoai, director of the Opponent, with exhibits ET-1 to ET-15, dated 10 May 2020 (‘Tinoai’).
Michael Davey, Chief Operating Officer of Super IT Solutions, with exhibits MD-1 to MD-2, dated 11 May 2020 (‘Davey’).
Evidence in answer
Aaron Clarke, Managing Director of the Applicant, with exhibits AC-1 to AC-15, dated 11 August 2020 (‘Clarke’).
Evidence in reply
Scott Coulthart, solicitor with Mills Oakley law firm, with exhibit SCR01.

8. As a preliminary matter I mention that a number of further documents were filed shortly before the hearing by both parties. In its submissions to the hearing the Applicant filed at Annexure 3:

·ASIC records regarding four of the corporate entities discussed by the parties;
·a 2021 decision of the Federal Court of Australia concerning Mr. Davey and the liquidators of one of the corporate entities of which he had been a director;
·a 2019 decision of the WIPO Arbitration and Mediation Center regarding a domain name under dispute between the Applicant and another of the corporate entities of which Mr. Davey had been a director; and
·extracts from IP Australia’s database of trade marks.

9. Whilst, generally, late filed material will not be admitted into proceedings the Opponent here did not object it, and the decisions of the Federal Court of Australia and the WIPO Arbitration and Mediation Center clarified certain matters. They are comprised of public records, and Mr Davey’s attorney firm here represented him both. As such, the content of those decisions will be of no surprise to the Opponent and I have allowed them into proceedings. The remaining documents comprise of information already before me: the ASIC records are included within the Opponent’s evidence and the extracts are of trade marks referred to in the Applicant’s evidence.

For its part the Opponent filed, on the morning of the hearing:
·An extract of an ABN search for The Trustee of the Davey Family Trust No. 2,
·An extract of a Whois auda domain name search in respect of the domain name superitsolutions.com.au,
·An extract of a Whois auda domain name search in respect of the domain name supergeek.com.au, and
·A document entitled ‘Domain Report – SuperGeek.com.au’ prepared by an entity named Domain Tools and prepared on 11 May 2021.
The Applicant objected to their admission on the basis that the first three documents did not assist the Opponent’s case, and in respect of the last document, there was no information about who prepared it or what the results were meant to mean – all that could be said of it was that a third party had extracted various things from the internet. I am inclined to agree with Applicant regarding the ‘Domain Report – SuperGeek.com.au’. There is no information about the entity that prepared the report, and whilst it has been filed partly to show that an error of dates (referred to later) was made inadvertently, there are nonetheless 48 other pages of information about which little has been said. For these reasons I consider an application for its inclusion ought to have been made, including the provision of compelling reasons to do so, but none has. As such, I do not take the ‘Domain Report – SuperGeek.com.au’ report into account. As to the remaining three documents, the Opponent made no clear reference to them in submissions. I am uncertain of their purpose and as such have not taken them into account.
A further preliminary matter arises by virtue of the fact that Ms Tinoai deposes to several matters of which she apparently has no direct knowledge, although there is some indication that Mr Davey (who does appear to have had direct knowledge of events) is her domestic partner. Curiously Mr Davey does not declare these matters himself but rather states ‘I have read and agree with everything stated in the declaration dated 10 May 2020 of my partner Elizabeth Tinoai’. In particular these matters relate to a complex corporate history and the transfer of business and assets when Mr Davey, and not Ms Tinoai, was director of the entities involved. Whilst I have not rejected Ms Tinoai’s evidence I give it less weight particularly where there appears to be an anomaly or contra-indication of events.
As to the declarations, a summary of the relevant information therein is as follows. I have excluded information pertaining to some companies and assets other than the Trade Mark, where they do not affect the matter here, in order to simplify a relatively complex background.
In 2003 a business trading under the name ‘SuperGeek’ commenced. It provided mobile computer repair services. The trading entity of the business was Supergeek.com.au Pty Ltd (‘SGPL’) (which in 2014 changed its name to A4dable Geeks Pty Ltd). Michael Davey was a director of SGPL from its registration on 16 December 2003. He claims to be the original author of the Trade Mark, having developed it for use by the SuperGeek business. Wayback Machine[5] extracts dating from 21 June 2011 show incomplete web pages which display the words SuperGeek = Super Fixed, Super Fast, and from 1 March 2013 also display the words Need I.T. Fixed? (as well as a composite SUPERGEEK.com.au trade mark).[6] The Trade Mark appears in its entirety on extracts from 1 March 2013, upon an image of a company vehicle which is featured on the home page.
[5] Being a tool with which to search the Internet Archive, a non-profit digital library of, inter alia, web pages as they appear over time.
[6] Tinoai, exhibits ET-7 and ET-10.
On 28 June 2013 Davey SG Pty Ltd (‘DaveyCo’) was incorporated, with Mr Davey as its sole director and shareholder. Ms Tinoai declares that the SuperGeek business was assigned to DaveyCo in or around 2012: this appears to be an obvious error given both Ms Tinoai and Mr Clarke provide ASIC extracts of DaveyCo which show it was not incorporated until 28 June 2013. Ms Tinoai provides no evidence to support her statement. On behalf of the Applicant Mr Clarke exhibits a Business Sale Agreement[7] between SGPL and DaveyCo prepared by the Opponent’s law firm, Mills Oakley Lawyers. It is dated 22 October 2013 and is signed by Mr Davey as director of both parties to the agreement. It shows that the SuperGeek business was sold by SGPL to DaveyCo including, without limitation, all of the business’s intellectual property (per the definitions of ‘Assets’ and ‘Intellectual Property’ given on pages one and two of the agreement). I therefore have taken the date of sale of the business to be 22 October 2013, and consider that the unregistered Trade Mark formed part of that sale.
[7] Clarke, exhibit AC-8.
Also in 2013 Mr Clarke commenced employment with the SuperGeek business. He was employed for two periods over several years, being 17 October 2013 to 16 September 2015 and 18 June 2017 to 27 October 2017. The parties say little of his role or responsibilities, nonetheless it appears common ground that he was aware of the branding and trade marks of the SuperGeek business.
On 24 March 2015 DaveyCo was put under external administration (it is now in liquidation). It entered into a Deed of Company Arrangement[8] on 11 May 2015 which returned the day-to-day control of the company to Mr Davey subject to certain conditions, including that he could not sell or deal with any of the assets of the company outside the ordinary course without the consent of the Deed Administrators and secured creditors.
[8] Clarke, exhibit AC-10.
Ms Tinoai states in her declaration that on 22 March 2016 DaveyCo assigned the SuperGeek business to another entity of which Mr Davey was a director, SG Corporate Services Pty Ltd (‘SG’, incorporated on 13 March 2015, now under external administration). This date was objected to by the Applicant on grounds including that it differed from the date given in matters between the liquidators of DaveyCo and Mr Davey before the Federal Court of Australia. There the date of the purported sale was given as ‘in or around April 2017’. The Opponent’s representative sought to explain at the hearing that it was an inadvertent error arrived at by looking at the history of domain name transfer to deduce the date of the purported sale, and that the date was in fact meant to be in or around April 2017.
In any event, Ms Tinoai’s statement is utterly unsupported by any documentation relating to any assignment or sale of business. I note also that in the Federal Court matter[9] the sale was described as a ‘purported sale’, indicating that there too the sale had not been proven to have taken place. Additionally, had the assignment or sale taken place it would have been in contravention of the Deed of Company Arrangement: the administrators and liquidators of DaveyCo have no record of any sale or transfer of the business,[10] and their written consent would have been required in order for the assignment or sale to have taken place. Moreover, on 21 January 2017 Mr Davey was banned from managing corporations for two and a half years, for reasons including insolvent trading and illegal ‘phoenix’ activity (wherein assets of an indebted company are transferred to a new company). It would seem therefore that Mr Davey had no capacity to assign or sell the business.
[9] Owen as Liquidator of Davey SG Pty Ltd (in liq) v Davey, in the matter of Davey SG Pty Ltd (in liq) [2021] FCA 200.
[10] According to emails from them in Clarke, exhibit AC-6.
According to Ms Tinoai the SuperGeek business was then ‘leased’ on 1 November 2018 to another entity, Supergeek Pty Ltd (‘SupergeekCo’, of which Ms Tinoai is the sole director and the Opponent is the sole shareholder), which continued to operate the business and to whom the business was ultimately sold. Again, this statement is unsupported by any documentation.
Ms Tinoai further deposes that, as part of the liquidation process of DaveyCo, DaveyCo was ‘forced’ to sell its ‘SuperGeek’ trade marks to the Applicant, but it ‘did not sell the business’. Rather, ‘the Opponent’s business’ [a misnomer] was rebranded to Super IT Solutions for reasons including that there was confusion in the market place between the Opponent’s and Applicant’s businesses. The Opponent has now filed its own application to register the words SUPER FIXED SUPER FAST.
The Applicant’s version of events is that the last sale of the SuperGeek business was to DaveyCo, and DaveyCo was the last owner of the Trade Mark at common law. The Applicant has sought documentation from the current administrators/liquidators of DaveyCo of any sale or transfer of the business to SG, but no record has been found. In emails[11] to Mr Clarke the administrators/liquidators state:
We have requested all of the books and records pertaining to the Company [DaveyCo] be delivered up to our offices from the following parties:
·Williams Hall Chadwick (the Company’s external accountants)
·Mills Oakley (the Company’s lawyers)
·Jirsch Sutherland (the Administrators and Deed Administrators of the Company)
·Michael Davey
We have reviewed the documents that the above parties have provided, and have been unable to locate any contract or agreement between the Company and SG Corporate Services Pty Ltd regarding the purported transfer or sale of the Company’s assets.
[11] Clarke, exhibit AC-6.
On 8 February 2019 the Applicant was incorporated with Mr Clarke as one of its directors and its majority shareholder. It too operates a computer repair business.
On 6 March 2019 an Asset Sale Agreement[12] between DaveyCo (in liquidation), the liquidator of DaveyCo and the Applicant was executed. Under the agreement the Applicant purchased from DaveyCo (in liquidation) the registered trade mark shown below, another registered trade mark being the word Supergeek in plain text, and a telephone smart number (13 4335, or 13 GEEK).

[12] Clarke, exhibit AC-14.

On 16 March 2019 the subject application for registration of the Trade Mark was filed.
On 29 July 2020 a Trade Mark Assignment Deed[13] was executed between DaveyCo (in liquidation), the liquidator of DaveyCo and the Applicant. Its recitals state:
A.On or around 22 October 2013, the Assignor [being DaveyCo] purchased the unregistered Trade Mark [being the subject Trade Mark] pursuant to an asset sale agreement.
B The Assignor is the current owner of the rights in the unregistered Trade Mark.
CThe Assignee [being the Applicant] has requested and the Assignor has agreed to assign the unregistered Trade Mark on the terms and conditions set out in this deed.
[13] Clarke, exhibit AC-13.
The Applicant’s case accordingly is that it has the better right to the Trade Mark; the Trade Mark Assignment Deed making good the omission of the unregistered Trade Mark from the Asset Sale Agreement executed on 6 March 2019.

The Law

Section 58

Section 58 of the Act relevantly provides:
Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
It is not necessary that the Opponent establish it was the owner of the Trade Mark, only that a party other than the Applicant was the owner.
As it happens, the Applicant itself establishes that another party owned the Trade Mark as at the date of application. Whilst the evidence establishes a chain of title that leads to the Applicant now, according to its evidence DaveyCo was the owner of the Trade Mark at common law on 16 March 2019, the filing date. DaveyCo did not assign the Trade Mark to the Applicant until 29 July 2020.
In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd[14] the Full Court of the Federal Court of Australia discussed ownership of trade marks within the scheme of the Act, particularly in terms of ss 27 and 58. The decision confirmed a number of principles: that the Act provides for registration of proprietorship, not proprietorship by registration; that ownership may arise either by authorship and prior use or, for an unused trade mark, by reason of authorship, filing an application and an intention to use or authorise use of a trade mark; and the requirement of ownership at the date of application is confirmed by several sections of the Act including the assignment and transmission provisions. In particular their Honours state (emphasis added):
14. ICI contends that the primary judge ought to have accepted its argument that the requirement of ownership must be satisfied when the application was made and cannot be satisfied at any time thereafter. We agree.
…
19. In either case, be it ownership by authorship and prior use or ownership by the combination of authorship, the filing of the application and an intention to use, the scheme of the legislation under both the 1995 Act and its predecessors, the Trade Marks Act 1905 (Cth) (the 1905 Act) and the Trade Marks Act 1955 (Cth) (the 1955 Act) provide for “registration of ownership not ownership by registration” (PB Foods v Malanda Dairyfoods Ltd [1999] FCA 1602; (1999) 47 IPR 47 at [78] – [80] per Carr J cited in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56 at [170]).
…
31. In the context of this scheme, where the capacity to file an application depends on a claim of ownership (s 27(1)(a)) and use or an intention to use the mark (s 27(1)(b)), the ground of opposition in s 58 should be construed as applying at the time the application is made. If it were otherwise, the provisions regulating the capacity to file an application, s 27(1)(a) and s 27(1)(b), need not require the applicant to be a person claiming to be the owner of the mark who is using or intends to use the mark as at the application date. Similarly, as held in Food Channel with respect to s 59 (which provides that registration may be opposed on the ground that the applicant “does not” intend to use or authorise the use of the mark or to assign the mark to a body corporate for use), if the requisite intention need not exist as at the filing of the application then there would be no purpose in s 27(1)(b) imposing such a requirement.
32. Once it is understood that the legislative scheme operates in the context of established principle that the alternative sources of ownership of a trade mark are authorship and use before filing an application for registration or the combination of authorship, filing of an application for registration and an intention to use or authorise use, the relationship between s 27 and ss 58 and 59 of the 1995 Act becomes apparent. The grounds of opposition in ss 58 and 59 reflect the requirements of s 27. Only a person claiming to be an owner may apply for registration. That claim may be justified at the time the application is made based on either alternative source of ownership. But if the claim is not justified at that time, ss 58 and/or 59 are available grounds of opposition. Moreover, if the applicant is not the owner of the mark at the time of the filing of the application, the assignment provisions in ss 106 – 111 do not assist because they authorise the assignment of the mark and thus pre-suppose, consistent with established principle, that the applicant owns the mark.
33. In Shell at 624 Dixon J said that the fact that registration gives rights back to the date of application is consistent with the requirement that the applicant own the mark at the application date. We agree.
…
44. A necessary consequence of our conclusions above is that the purported assignment of the trade mark from Mr Pham to IR after the filing of the application, on 1 July 2013, was immaterial. The requirement for ownership applied at the filing date of the application on 7 December 2011. Nothing which happened after that date could cure the deficiency in ownership at the application date.
[14] [2017] FCA 83, [12]-[48] (Greenwood, Jagot and Beach JJ), (‘Pham Global’).

Clearly it is the owner of a trade mark who must apply for its registration. Where the application is filed in the name of someone other than the owner, the flaw cannot be cured at a later date by assignment. Although here the owner of the Trade Mark has assigned it to the Applicant, whereas in Pham Global the applicant, who was not the owner, ‘assigned’ the trade mark to the owner, the inescapable conclusion is that the Applicant could not claim to be the owner of the Trade Mark at the filing date. Rather, the chain of title established by the evidence before me shows that it was DaveyCo who owned the Trade Mark by virtue of the Business Sale Agreement between SGPL and DaveyCo. As such, the Applicant was not the owner of the Trade Mark when it applied for registration, and the later assignment cannot alter that fact.
If necessary I confirm that I consider the other requirements of s 58 are met, namely that the trade marks are at least substantially identical[15] and the services of the parties are the same kind of thing.[16] The ground under s 58 is accordingly established.
[15] Per Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).
[16] Per Re Hicks’ Trade Mark (1897) 3 ALR 75.

Decision and costs

Section 55 of the Act relevantly provides:
55 Decision
(1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a)to refuse to register the trade mark; or
(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note:For limitations see section 6.
The Opponent has established the ground of opposition under s 58. Accordingly, I refuse to register trade mark application no. 1996385. The refusal will be recorded one month from the date of this decision unless the Registrar has been served with a notice of appeal before that time. In that case I direct that the disposition of the application be in accordance with the court’s orders.
Both parties sought an award of costs. Costs usually follow the event. There being no reason to make an exception here, I award costs against the Applicant.

Nicole Worth
Hearing Officer
Delegate of the Registrar of Trade Marks

16 August 2021

ATTACHMENT A

Class 37: Computer support services (installation repair and maintenance of computer hardware and peripherals); Information technology (IT) services (computer and computer peripherals installation and maintenance); Installation and repair of computer hardware; Installation of computerised information systems; Installation of computers; Installation of middleware (computer hardware); Installation, maintenance and repair of computer hardware; Installation, maintenance and repair of computer peripherals; Installation, maintenance and repair of middleware (computer hardware); Maintenance and repair of computer hardware; Maintenance and repair of computers; Maintenance of computers; Maintenance services relating to computer hardware; Repair of computers; Residential, commercial and industrial installation and repair of electrical and computer wiring and cabling.

Class 42: Advisory services relating to computer hardware; Advisory services relating to computer programming; Advisory services relating to computer software; Advisory services relating to computer systems analysis; Advisory services relating to computer systems design; Analytical services relating to computers; Back-up (copying) of computer data; Computer advisory services; Computer analysis; Computer co-location services; Computer consultancy; Computer consultancy services; Computer design; Computer disaster recovery services; Computer engineering; Computer engineering consultancy services; Computer firewall services; Computer hire; Computer network services; Computer program advisory services; Computer program maintenance services; Computer program updating services; Computer programming; Computer programming consultancy; Computer rental; Computer research services; Computer security consultancy; Computer security engineering; Computer security services (design and development of secure computer hardware, software and systems); Computer security services (programming and software installation repair and maintenance services); Computer security services (testing and risk assessment of computer networks); Computer security services in the nature of providing authentication, issuance, validation and revocation of digital certificates; Computer software advisory services; Computer software consultancy; Computer software design; Computer software development; Computer software engineering; Computer software programming services; Computer support services (computer hardware, software and peripherals advisory and information services); Computer support services (programming and software installation, repair and maintenance services); Computer system analysis; Computer system design; Computer technology consultancy; Computer virus protection services; Computerised business information storage; Computerised data storage services; Consultancy in the design and development of computer hardware; Consultancy in the design and development of computer software; Conversion of computer programs and data, other than physical conversion; Design of computer programs; Design of computer software; Development of computer based networks; Development of computer programmes; Development of computer software; Development of computer software application solutions; Development of computer systems; Diagnosis of faults in computer software; Hosting computer sites (web sites); Information services relating to computers; Information technology (IT) services (computer hardware, software and peripherals design and technical consultancy); Installation and maintenance of computer software; Installation of computer software; Maintenance of computer programs; Modifying of computer programs; Monitoring of computer systems by remote access; Monitoring of computer systems for detecting unauthorised access or data breach; Monitoring of computer systems to detect breakdowns; Personal computer hire; Preparation of reports relating to computer programs; Preparation of reports relating to computers; Providing information on computer technology and programming via a web site; Providing information, including online, about design and development of computer hardware and software; Providing virtual computer systems through cloud computing; Provision of information relating to computer programming; Provision of information relating to computer programs; Provision of information relating to computers; Provision of technical information in relation to computers; Recovery of computer data; Remote monitoring of computer systems; Rental of computer apparatus; Rental of computer equipment; Rental of computer hardware; Rental of computer middleware; Rental of computer programs; Rental of computer software; Rental of computers; Repair of computer software; Research relating to computers; Security assessment services for computer networks; Security risk assessment services relating to computer systems; Testing of computer installations; Testing of computer programs; Testing of computers; Updating of computer programs; Updating of computer software; Updating of memory banks of computer systems; Upgrading of computer software; Writing of computer programs; Writing of computer software.