Opposition by Myspace LLC to application under section 92 of the Act by Michelle McLean to remove trade mark registration number 1157805 (9, 15, 16, 25, 35, 38, 40, 41, 42, 45) - ILIKE - in the name of Myspace LLC

[2019] ATMO 67

TRADE MARKS ACT 1995

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

Re:Opposition by Myspace LLC to application under section 92 of the Act by Michelle McLean to remove trade mark registration number 1157805 (9, 15, 16, 25, 35, 38, 40, 41, 42, 45) - ILIKE - in the name of Myspace LLC

Delegate:	Iain Campbell Thompson
Representation:	Opponent: Spruson & Ferguson Applicant: Cornwall Stodart
Decision:	2019 ATMO 67 Trade Marks Act 1995 Opposition under section 96 to application for removal under section 92 – opposition to removal established in relation to the Services and some of the Goods. No costs award

Background

1.     In these proceedings Michelle McLean (‘the Applicant’) applied on 11 April 2017 under the provisions of section 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) for the removal of the trade mark appearing below in respect of all of the goods and services for which it is registered:

Registration No:           1157805

Priority Date:               24 July 2006 (Convention)

Goods/Services:          Class 9: Musical sound recordings; musical video recordings; prerecorded compact discs; prerecorded minidisks; prerecorded audio loops, namely prerecorded music; prerecorded electronic media, namely, DVDs, audio tapes; MP3s featuring recorded music and recorded music video consisting of musical performances; downloadable musical sound recordings; downloadable musical video recordings; downloadable electronic publications in the nature of magazines and newsletters on music, musicians, musical artists, musical technology, song writing, musical composition and entertainment; audio loudspeakers; amplifiers; audio equipment, namely receivers, stereos, speakers, equalizers, cross overs; electric audio playback units with lights and speakers; stereo tuners; guitar amplifiers; guitar cables; guitar effects processors; digital storage devices, namely blank computer disks, computer disk drives, prerecorded video tapes, blank CD-ROMs all for audio and video recording; karaoke machines; digital audio workstations, namely personal recording studio comprised of eight track players, effects processors, digital audio recorders and players; signal converters; input “break-out” cables; remix stations for mixing digital audio files and music; disc jockey equipment, namely microphones, turntables, remixing headphones, music mixers, fog machines, strobe lights, light controllers; CD players and recorders, digital audio players and recorders; flash memory cards; hard drives for computers; audio equipment, namely, input/output mixing boards; computer control surfaces, namely touch pads; Internet enabled recorders, namely digital audio and video recorders for recording and playing music and digital files over the Internet; music analog and digital synthesizers; special effects processors for processing audio and digital data; digital signal processors; downloadable ring tones via a global computer network and wireless devices; music and sound samplers; downloadable computer software for management of personal information and preferences as to music, video and entertainment products; downloadable computer software for use in authoring, transmitting, receiving, editing, extracting, encoding, decoding, playing, storing and organizing audio and video; downloadable computer software to enable the creation of digital content for distribution over computer networks

Class 15: Guitars; electric guitars; guitar picks; guitar straps; guitar strings; keyboard instruments, namely, musical instrument digital interface (midi) controllers; electronic drum machines

Class 16: Bumper stickers; print magazines and newsletters on music, musicians, musical artists, musical technology, song writing, musical composition, and entertainment

Class 25: Clothing, namely T-shirts, sweatshirts, hats and jackets

(‘the Goods’)

Class 35: Consulting services in the fields of music promotion and distributorship in the field of prerecorded music; management advice services for musical artists and musicians; retail store services in the field of music, video and entertainment provided via the Internet and other computer and electronic communication networks; promoting the goods and services of others over the Internet; advertising services, namely providing online computer databases and online searchable databases featuring classified listings and want ads; providing online databases of business information on music, videos and entertainment to consumers, namely, lists of best-selling products and consumer preferences

Class 38: Podcasting services, webcasting services, subscription services for audio broadcasting, downloadable computer software to enable audio, video, text and graphical content to be accessed on-demand or via a subscription over computer networks; downloadable computer software to enable the hosting and distribution of digital content over computer networks; providing online chat rooms and electronic bulletin boards for transmission of messages among users in the fields of music and of general interest; providing email and instant messaging service; providing electronic transmission of product and music recommendations, and personal preferences

Class 40: Media duplication of data and digital information; duplication of audio tapes; duplication of video tapes

Class 41: Entertainment services, namely, arranging and conducting interactive musical contests; providing reviews and ratings of musicians, music and videos; providing prerecorded music and videos; providing commentary and information about musical artists, musical technology, musicians, song writing, musical composition, music and entertainment, including musical event scheduling information and radio and television programming; providing radio musical programming; production of television programming, radio programming and films featuring music, musicians, musical artists; television series featuring a continuing interactive talent competition; conducting live concerts and performances

Class 42: Computer services, namely, hosting online web facilities for others for organizing and conducting online meetings, gatherings and interactive discussions; computer services in the nature of customized web pages featuring user-defined information, personal profiles and information; consumer product rating services provided via a global computer network, namely, rating and identifying all types of music, video and entertainment products for production and distribution; delivery of personalized information in response to user inquiries; providing information about music, videos and entertainment to customers based on preferences, similarities and behavior of other consumers

Class 45: Internet based dating, introduction and social networking services

(‘the Services’)

Trade Mark:                ILIKE

(‘the Trade Mark’)

2. As provided for by section 96 of the Act, the owner of the Trade Mark, Myspace LLC (‘the Opponent’) filed Notice of Intention to Oppose the application on 20 June 2017.

3.     On 20 July 2017, the Opponent filed its Statement of Grounds and Particulars which, in brief, asserts that the Opponent has used the Trade Mark.

4.     On 10 August 2017, the Applicant filed a Notice of Intention to Defend.

5.     On 16 November 2017, the Opponent filed its Evidence in Support, this being a declaration by Timothy Vanderhook, President and Chief Executive Officer of the Opponent, made on 13 November 2017, with Exhibits TV-1 to TV-3, the latter of which is marked ‘Confidential’.

6.     The Applicant has not filed Evidence in Answer.

7.     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 and the Opponent has filed written submissions by its attorneys, Spruson & Ferguson.

8.     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.

Principles

1. As the application to remove the Trade Mark from the Register was filed on 11 April 2017, the Relevant Period for the purposes of section 92(4)(b) of the Act is the three year period ending on 11 March 2017.

2. 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;

   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.

3. A single bona fide use of a trade mark in the Relevant Period may be sufficient to answer an application for removal under subsection 92(4)(b): Woolly Bull Enterprises Pty Ltd v Reynolds.[1]

   [1] [2001] FCA 261; 107 FCR 166 at 172.

4. 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’).[2]

   [2] [1962] RPC 1 at 7 per Wilberforce J.

5. 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. [3]

   [3] [1977] RPC 131.

6. The relevant standard of proof that the Opponent bears is on the balance of probabilities.[4] 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]

   [4] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599.

7. In Blount Inc v Registrar of Trade Marks Branson J observed:[5]

   [5] [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37-241.

   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.

8. It follows that unless the Opponent evidences “convincing proof” of use, or authorised use, of the Trade Mark “in the course of trade”:[6]

   [6] See section 17 of the Act: What is a trade mark?

   1.Without alterations or additions which substantially affect its identity;[7]

   [7] Subsections 7(1) and 100(3)(b)(i) of the Act apply.

   2.during the Relevant Period;

   3.in relation to the Goods and the Services;

   to the satisfaction of the Registrar, the opposition to removal will not be established.

9. Even if the Trade Mark has not been used and opposition to removal has not been established, there remains a discretion under section 101 of the Act for the Registrar to allow the Trade Mark to remain on the Register in respect of some or all of the Goods and/or Services if satisfied it is reasonable to do so.

   The Evidence

   The Opponent

   18.     In his declaration Mr Vanderhook explains:

   The Opponent owns and operates the MYSPACE social networking platform, which offers an interactive, user-submitted network of friends, personal profiles, biogs, groups, photos, music, and videos.

   The Opponent acquired ilike, Inc., including the ILIKE trade mark in 2009. I am informed that the assignment of the ILIKE trade mark from ilike, Inc., to the Opponent was recorded on the Australian Register on 20 December 2012.

   Prior to being acquired by the Opponent, ilike, Inc. used the ILIKE trade mark in connection with a music streaming service where users could listen to music samples for free with ads, musicians could publish music, users could share music with friends, and an algorithm would suggest new music to users.

   Since 6 February 2012, the Opponent has used the ILIKE trade mark on its social networking platform as part of a dedicated music discovery function accessible via desktop and mobile devices. Now shown to me and marked Exhibit TV-1 are screenshots taken from the Internet Archive Wayback Machine showing the use of the ILIKE trade mark by the Opponent from 2008, 2009, 2013, 2014, 2015, 2016, and 2017.

   In particular, the ILIKE trade mark is used on the Opponent’s MYSPACE social networking platform to enable users to:

   • search for music by genre, song, album, artist and mix;

   • listen (stream) music and watch (stream) videos;

   • create mixes (playlists) of music and videos;

   • upload music;

   • access, download and read music-related articles; and

   • connect with artists/musicians.

   Now shown to me and marked Exhibit TV-2 are screenshots taken from the Opponent’s MYSPACE social networking platform. These pages (or similar pages) would have been visible to users during the Relevant Period.

   19.     The screenshots referred to by the Opponent show use of the Trade Mark in a plain font rendered as “iLike”.

   20.     The confidential exhibit to the declaration provides the approximate yearly user sessions from Australia during the Relevant Period accessing the services provided by the Opponent.

   The Applicant

   21.     As the Applicant has not filed evidence, there is no information about her interests in the application for removal that is before the Registrar.

   Section 92(4)(b)

10. Section 92 of the Act relevantly provides:

    92Application 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:

    […]

    (b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

    (i)used the trade mark in Australia; or

    (ii)used the trade mark in good faith in Australia;

    in relation to the goods and/or services to which the application relates.

    Note 1:For file and month see section 6.

    Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

    23. For the sake of completeness, I observe that the use of the Trade Mark by the Opponent in the form “iLike” is, in terms of subsection 7(1) of the Act, a use of the Trade Mark with additions or alterations that do not substantially affect its identity.

    24.     In my consideration, the use in Australia of the Trade Mark during the Relevant Period shown by the Opponent is a use in relation to those goods and services stated by Mr Vanderhook to be those that to enable users to:

    • search for music by genre, song, album, artist and mix;

    • listen (stream) music and watch (stream) videos;

    • create mixes (playlists) of music and videos;

    • upload music;

    • access, download and read music-related articles; and

    • connect with artists/musicians.

    25.     Such use within the Relevant Period obviously does not extend to, at least, many of the Goods for which the Trade Mark is registered.

    26. That said, the Opponent asks that the Registrar exercise the discretion afforded under section 101 of the Act and it is convenient to consider a suitable restriction to the Goods and Services under that provision.

    Discretion

11. Section 101 of the Act relevantly provides:

    101Determination of opposed application—general

    […]

    (3)If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

    (4)Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:

    (a)similar goods or closely related services; or

    (b)similar services or closely related goods;

    to those to which the application relates.

    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)).

    Note 2:For registered owner see section 6.

12. In Pioneer Computers Australia Pty Ltd v Pioneer KK Bennett J observed:[8]

    [8] [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354 at [167].

    The discretion under s 101(3) is a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.

    In Kowa Company at [98], Lander J rejected the submission that a party seeking the exercise of the discretion needs to show “exceptional circumstances”. In E & J Gallo at [198], Flick J agreed with Lander J that there is no requirement to establish exceptional circumstances. With respect, I also agree with Lander J that there is no warrant to read a requirement for exceptional circumstances into s 101(3).

    In E & J Gallo at [202]-[203], Flick J stated that the following factors set out by Falconer J in Hermes Trade Mark [1982] RPC 425 were of assistance in considering the exercise of the discretion:

    ·there had been no abandonment of the trade mark;

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

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

    ·the applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark;

    ·the registered proprietors were not aware of the applicant’s sales under the mark.

    29.     The Opponent submits that it is appropriate that the Registrar exercise the discretion afforded by subsection 101(3) in relation to the following goods and services:

    Class 9: Musical sound recordings; musical video recordings; pre-recorded audio loops, namely pre-recorded music; MP3s featuring recorded music and recorded music video consisting of musical performances; downloadable musical sound recordings; downloadable musical video recordings; downloadable electronic publications in the nature of magazines and newsletters on music, musicians, musical artists, musical technology, song writing, musical composition and entertainment; audio loudspeakers; Internet enabled recorders, namely digital audio and video recorders for recording and playing music and digital files over the Internet; special effects processors for processing audio and digital data; downloadable ring tones via a global computer network and wireless devices; downloadable computer software for management of personal information and preferences as to music, video and entertainment products; downloadable computer software for use in authoring, transmitting, receiving, editing, extracting, encoding, decoding, playing, storing and organizing audio and video; downloadable computer software to enable the creation of digital content for distribution over computer networks.

    Class 35: Retail store services in the field of music, video and entertainment provided via the Internet and other computer and electronic communication networks; promoting the goods and services of others over the Internet; advertising services, namely providing online computer databases and online searchable databases featuring classified listings and want ads; providing online databases of business information on music, videos and entertainment to consumers, namely, lists of best-selling products and consumer preferences

    Class 38: Subscription services for audio broadcasting, downloadable computer software to enable audio, video, text and graphical content to be accessed on-demand or via a subscription over computer networks; downloadable computer software to enable the hosting and distribution of digital content over computer networks; providing online chat rooms and electronic bulletin boards for transmission of messages among users in the fields of music and of general interest; providing email and instant messaging service; providing electronic transmission of product and music recommendations, and personal preferences.

    Class 41: Providing reviews and ratings of musicians, music and videos; providing pre-recorded music and videos; providing commentary and information about musical artists, musical technology, musicians, song writing, musical composition, music and entertainment, including musical event scheduling information and radio and television programming; providing radio musical programming;

    Class 42: Computer services, namely, hosting online web facilities for others for organizing and conducting online meetings, gatherings and interactive discussions; computer services in the nature of customized web pages featuring user-defined information, personal profiles and information; consumer product rating services provided via a global computer network, namely, rating and identifying all types of music, video and entertainment products for production and distribution; delivery of personalized information in response to user inquiries; providing information about music, videos and entertainment to customers based on preferences, similarities and behaviour of other consumers.

    Class 45: Internet based dating, introduction and social networking services.

    30.     As I have observed, the Applicant has not filed evidence and so her interests in the exercise of the Registrar’s discretion are unknown.

    31.     In my consideration, the evidence submitted by the Opponent shows that the scope of the services it offers in connection with the use of the Trade Mark broadly matches the restriction to the Goods and Services suggested by the Opponent.  Where the restriction does not match the demonstrated use of the Trade Mark in Australia, the provisions of subsection 101(4) come into play as the Opponent has demonstrated use of the Trade Mark in Australia within the Relevant Period on similar goods or closely related services and/or similar services or closely related goods.

    32.     Accordingly, I consider that, with the scope of the Opponent’s social networking platform in mind, the use of the Trade Mark on the above goods and services by a person other than the Opponent would be likely to confuse or deceive and so the above restriction of the Opponent’s Goods and Services is appropriate.

    Decision

    33. Section 101 of the Act relevantly provides:

    101Determination 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.

    34.     I find that the Opponent has established its opposition to registration in relation to the Goods and Services which appear below and that it is therefore appropriate to direct that (should there be no appeal against this decision) the registration be removed from the Register in respect of all but the following goods and services:

    Class 9: Musical sound recordings; musical video recordings; pre-recorded audio loops, namely pre-recorded music; MP3s featuring recorded music and recorded music video consisting of musical performances; downloadable musical sound recordings; downloadable musical video recordings; downloadable electronic publications in the nature of magazines and newsletters on music, musicians, musical artists, musical technology, song writing, musical composition and entertainment; audio loudspeakers; Internet enabled recorders, namely digital audio and video recorders for recording and playing music and digital files over the Internet; special effects processors for processing audio and digital data; downloadable ring tones via a global computer network and wireless devices; downloadable computer software for management of personal information and preferences as to music, video and entertainment products; downloadable computer software for use in authoring, transmitting, receiving, editing, extracting, encoding, decoding, playing, storing and organizing audio and video; downloadable computer software to enable the creation of digital content for distribution over computer networks.

    Class 35: Retail store services in the field of music, video and entertainment provided via the Internet and other computer and electronic communication networks; promoting the goods and services of others over the Internet; advertising services, namely providing online computer databases and online searchable databases featuring classified listings and want ads; providing online databases of business information on music, videos and entertainment to consumers, namely, lists of best-selling products and consumer preferences

    Class 38: Subscription services for audio broadcasting, downloadable computer software to enable audio, video, text and graphical content to be accessed on-demand or via a subscription over computer networks; downloadable computer software to enable the hosting and distribution of digital content over computer networks; providing online chat rooms and electronic bulletin boards for transmission of messages among users in the fields of music and of general interest; providing email and instant messaging service; providing electronic transmission of product and music recommendations, and personal preferences.

    Class 41: Providing reviews and ratings of musicians, music and videos; providing pre-recorded music and videos; providing commentary and information about musical artists, musical technology, musicians, song writing, musical composition, music and entertainment, including musical event scheduling information and radio and television programming; providing radio musical programming;

    Class 42: Computer services, namely, hosting online web facilities for others for organizing and conducting online meetings, gatherings and interactive discussions; computer services in the nature of customized web pages featuring user-defined information, personal profiles and information; consumer product rating services provided via a global computer network, namely, rating and identifying all types of music, video and entertainment products for production and distribution; delivery of personalized information in response to user inquiries; providing information about music, videos and entertainment to customers based on preferences, similarities and behaviour of other consumers.

    Class 45: Internet based dating, introduction and social networking services.

    35.     If the Registrar has been served with a notice of appeal within one month of the date of this decision, I direct that the above direction shall not be effected until the appeal has been decided or discontinued and that the disposition of the application for removal should be in accordance with the court’s order or direction.

    Costs

    36.     Whilst the Opponent has requested its costs in this matter, I consider that both parties may be regarded as having had a modicum of success and I do not make an award.

    Iain Campbell Thompson
    Hearing Officer
    Trade Marks Hearings
    6 May 2019