Opposition by Sinch Software Pty Ltd to application by Sinch AB for partial removal of trade mark registration number 610657 (9) - Sinch (figurative) - in the name of Sinch Software Pty Ltd

[2021] ATMO 147

TRADE MARKS ACT 1995

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

Re:Opposition by Sinch Software Pty Ltd to application by Sinch AB for partial removal of trade mark registration number 610657 (9) - Sinch (figurative) - in the name of Sinch Software Pty Ltd

Delegate:	Louise Tuohy
Representation:	Opponent: Noric Dilanchian of Dilanchian Lawyers & Consultants Applicant: Vivian Tran of Spruson & Ferguson, assisted by Francesca Colubriale Principal of Spruson & Ferguson
Decision:	2021 ATMO 147 Trade Marks Act 1995 (Cth) – section 96 opposition to section 92(4)(a) and 92(4)(b) application for partial removal – no use in the relevant period – discretion not exercised – registration to be partially removed

Background

1. Sinch Software Pty Ltd (‘Removal Opponent’) is the registered owner of the following trade mark:

   Registration Number:            610657

   Trade Mark:  (‘Trade Mark’)

   Specification:  Class 9: Computer software

   Filing Date:       2 September 1993

2. Sinch AB (‘Removal Applicant’) applied on 11 November 2019 under the provisions of ss 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’) seeking partial removal of the Trade Mark. The goods for which the Removal Applicant submits ought to be partially removed are  ‘computer software’. The goods to remain in the specification are as follows:  

   Class 9: Computer software, namely, for use in practice management software, library management, document and knowledge management including of precedents, legal judgements, legal transcripts, and research articles, financial budgeting and management, thesaurus management and development, evidence management, database management, all the foregoing being used in relation to litigation support and the legal services industry

3. I proceed on the basis that the removal application is in respect of all other ‘computer software’ in class 9 which I will call the Goods.

4. On 16 January 2020 the Removal Opponent filed a Notice of Intention to Oppose partial removal of the Trade Mark, followed by a Statement of Grounds and Particulars (‘SGP’) on 15 February 2020. On 14 April 2020 the Removal Applicant filed a Notice of Intention to Defend the partial removal application.

5. The Removal Opponent filed the following declarations as evdience in support:

   ·Statutory declaration of Simon Lewis, Director of the Removal Opponent made on 15 February 2020 (‘First Lewis declaration’).

   ·Declaration of Simon Lewis, made on 14 August 2020 (‘Second Lewis declaration’).

6. The Removal Applicant did not file any evidence.

7. The matter was heard in Canberra on 2 September 2021. Noric Dilanchian of Dilanchian Lawyers & Consultants, appeared via video link on behalf of the Removal Opponent. Vivian Tran of Spruson & Ferguson assisted by Francesca Colubriale Principal of Spruson & Ferguson appeared via video link on behalf of the Removal Applicant. The representatives’ oral submissions were supported by written submissions filed prior to the hearing.

8. The matter was handed to me to decide in my capacity as a delegate of the Registrar of Trade Marks. What follows is my decision, with reasons, based upon the SGP, evidence and written and oral submissions.

9. At the hearing Mr Lewis provided additional evidence limited to clarifying certain matters raised in the First and Second Lewis declarations. As such I have exercised my discretion to have regard to this evidence in these proceedings.

   Legal Framework

10. Part 9 of the Act deals with removal of trade marks from the Register due to non-use. In the partial removal application the Removal Applicant nominated the grounds under ss 92(4)(a) and s 92(4)(b) of the Act.

11. Section 92(4) of the Act relatively provides:

    92  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;

    (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.

    […]

12. Pursuant to s 100(1) of the Act, the Removal Opponent bears the onus of rebutting an allegation made under s 92(4)(a) or s 92(4)(b). Although distinct and alternative grounds, the Removal Opponent can rebut both by establishing that it used the Trade Mark in good faith in relation to the registered goods in the relevant period.[1]

    [1] The Act, s 100(2)(a) and s 100(3)(a).

13. For the purposes of s 92(4)(a) the relevant period is any time before 11 October 2019. For the purposes of s 92(4)(b) the relevant period is the three-year period ending on 11 October 2019 (‘Relevant Period’).

14. In Woolly Bull Enterprises Pty Ltd v Reynolds,[2] Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92 of the Act, namely it is ‘real, as opposed to token, use in a commercial sense’. Provided the use is in good faith, ‘a single bona fide use of the mark’ may be enough to rebut an allegation of non-use.[3] Little weight is to be given to assertions of use which are not supported by documentary evidence.[4] In Nodoz Trade Mark, Wilberforce J said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof.’[5]

    [2] [2001] FCA 261, [16].

    [3] Ibid [17].

    [4] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Delegate Forno).

    [5] (1962) RPC 1, 7.

15. I proceed on the basis that the burden of proof is the ordinary civil standard of the balance of probabilities.[6]

    [6] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of an action opposing registration rather than removal.

16. In accordance with s 101 of the Act, if the grounds for removal are established, I may decide to partially remove the Trade Mark from the Register in respect of any or all of the Goods identified in the partial removal application, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark from the Register.

17. In the SGP the Removal Opponent asserts that the Trade Mark has been used, and attaches the First Lewis declaration which will be discussed in the next section of this decision.

18. Before proceeding I note that s 92(4)(a) merges with s 92(4)(b) once an impugned trade mark has been registered for five years.[7] As the Trade Mark had been registered for a period longer than five years at the date of the application for partial removal it is necessary only for me to consider the application for partial removal under s 92(4)(b).

    [7] Shanahan’s Australian Law of Trade Marks and Passing Off (Lawbook Co., 6^th Ed, 2016) [70.510].

    Discussion

19. The First Lewis declaration contains evidence that the Removal Opponent used the Trade Mark in relation to the Goods during the Relevant Period:

    ·Paragraph 6 includes a screenshot taken from an internal company record indicating a list of the invoices issued to the Removal Opponent’s clients over a five month period in 2017.

    ·Paragraph 6(a) claims that the Removal Opponent developed a searchable online database and AI/concept searching software named BookShow which is used by the Insearch Language Center at the University of Technology Sydney. In support of this claim the Removal Opponent notes that on 7 March 2017 it issued invoice number 6151 to Insearch Ltd for ‘2+hour of support for issues re Signin sound problems on’.

    ·Paragraph 10 provides screenshots from two databases:   

    • The first screenshot shows a database designed by the Removal Opponent on the internet so people from all over Australia could access it. The project involved the ‘Stolen Generations’ and the Removal Opponent issued the client invoice number 6155, dated 18 April 2017, for the amount of $2500 for the ‘Balance of payment of the $5,000 fixed fee for the development’.
    • The second example is a screenshot from a timeline database used by the owner of a fish farm in Wagga Wagga and is an example of the Removal Opponent’s charitable work.

20. In assessing this evidence, the invoice list produced at paragraph 6 is an internal record of the Removal Opponent and the descriptions of work provided are insufficient to demonstrate use of the Trade Mark in relation the Goods. The evidence provided at paragraphs 6(a) and 10 are not supported by evidence showing the date when the software product became available to users and the invoices only indicate use of the Trade Mark in relation to the provision of services.

21. The First Lewis declaration also contains evidence that since 2019 the Removal Opponent’s focus has been in the health technology area. Examples of the Removal Opponent’s activities in this area include:

    ·     Paragraph 9 provides examples are copies of two emails, the first email from Charles Serhan to Simon Lewis (the declarant) dated 20 March 2019 is in relation to the ‘Latest Resolvins paper’ and a second email from Peter Elwood to Simon Lewis (the declarant) dated 31 March 2019 is in relation to ‘Aspirin & Resovlins’.

    ·     Paragraph 11 also includes a screenshot from the Removal Opponent’s twitter account under the handle @SinchHealth and contains a link to the website sinchhealth.com. The account was created in May 2018 and has a ‘bio’ that reads ‘Much better – preventative, collaborative & precision medicine’. The screenshot also shows a retweeted item from the Early Nutrition and Health research group.

22. However, neither of the above examples show use of the Trade Mark in relation to the Goods.

23. In assessing the evidence before me, I find that there has been no use of the Trade Mark in relation to the Goods during the Relevant Period. At best the evidence points to the Removal Opponent providing computer software services and research services which are not the subject of the registration. I also note that the Second Lewis declaration does not give evidence of use for the Goods and only goes to the Registrar’s discretion.

24. Furthermore, the Removal Opponent does not claim nor does the evidence raise matters which could be regarded as obstacles to use of the Trade Mark in the Relevant Period, pursuant to s 100(3)(c) of the Act.

25. The grounds for removal under s 92(4)(b) of the Act has been established in relation to the Goods.

    Registrar’s Discretion

26. Section 101(3) of the Act provides:

    101  Determination 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.

    […]

27. The question to be asked is whether it is reasonable not to remove the Trade Mark in respect of the Goods, even though the Removal Opponent did not establish that it had used the Trade Mark in relation to the Goods.[8]

    [8] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [28] (Jacobson, Yates and Katzmann JJ).

28. The Removal Opponent bears the onus of satisfying the Registrar that the discretion under s 101(3) ought to be exercised in its favour.[9]

    [9] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [273] (Yates J).

29. In Societe Anonyme des Eaux Minerales d’Evian v The Yogurt Co Pty Ltd,[10] the delegate found that in exercise of the Registrar’s discretion, there are three factors which fall under the following broad headings to be considered:

    ·the interest of the owner of the trade marks;

    ·the interests of the applicant for removal; and

    ·the public interest.

    [10] [2012] ATMO 53, [33] (Delegate Thompson).

30. The Removal Opponent has requested the Registrar’s discretion to allow the Trade Mark to remain registered for all the goods instead of the restricted range put forward in the partial removal application. In particular the Removal Opponent submits that it needs the Trade Mark and its associated goodwill and reputation to fund and support its philanthropic efforts in the health sector.

31. In response, the Removal Applicant notes that it has a significant private interest in the partial removal of the Trade Mark since it has been raised as an obstacle preventing protection being extended to its International Registration Designating Australia, being trade mark number 1995755.

32. In the present case there is little evidence of reputation in the Trade Mark for the goods such that removal would cause confusion and not be in the public interest. The Removal Opponent has provided no annual sales or advertising figures, and while a list of invoices issued by the Removal Opponent was produced, the list only shows sales for a 5 month period in 2017. The promotion of the Trade Mark is limited to holding events such as Seminars which the Removal Opponent claims are held regularly and attract around 25 to 50 attendees. However, this evidence is insuffient to allow me to determine the reputation of the Trade Mark as it  does not show any use of the Trade Mark in connection with the goods.

33. Evidence of the Removal Opponent’s philapthropic efforts in the health sector includes maintaining its Sinch Health Twitter account and website, and Mr Lewis’s engagement with organisations and participants in the health industry which appears to involve the provision of  reasearch services and the distribution of materials. In addition the Second Lewis declaration submits that the Removal Opponent is undertaking philanthropic projects such as clinical trials and software development. However, the philaphropic activities undertaken by the Removal Opponent in the health sector would be classified as the provision of services which are not the subject of the registration.

34. The purpose of s 92 of the Act is to facilitate the removal of an unused trade mark and the public interest in the integrity of the Register will generally demand the removal of an unsed trade mark. Accordingly, the Registrar’s discretion should not be exercised liberally and the Removal Opponent bears the onus of satisfying the Registrar that the discretion should be exercised in its favour. In the present case, the Removal Opponent’s claim that it needs the Trade Mark to support is philanthropic efforts is unsuppported by the the evidence. More importantly the Removal Opponent’s private interests do not outweight the pubilc interest of the integrity of the Register. I am not satisfied by the evidence before me that it is reasonable to exercise that discretion in terms of s 101(3) in relation to such a broad range of goods in class 9 and I decline to do so.

    Decision

35. The Removal Opponent has not established use of the Trade Mark in relation to the Goods.  Accordingly, I direct that trade mark registration 610657 be partially removed from the Register, one month from the date of this decision. In the event of an appeal, I direct that the Trade Mark will not be removed until the appeal has been discontinued or, in the event of a decision from the Court, that the Trade Mark be subject to that order.

    Costs

36. Both parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Removal Opponent as allowed by Schedule 8 of the Trade Marks Regulations 1995 (Cth).

    Louise Tuohy
    Hearing Officer
    Oppositions and Hearings
    Trade Marks and Designs
    29 November 2021