Opposition by Superfinish Automotive Pty Ltd as trustee for the Superfinish Trust to an application by Honey’s Group of Companies Pty Ltd for partial removal of trade mark registration number 1196649 (class 37) –...

[2021] ATMO 104

TRADE MARKS ACT 1995

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

ReOpposition by Superfinish Automotive Pty Ltd as trustee for the Superfinish Trust to an application by Honey’s Group of Companies Pty Ltd for partial removal of trade mark registration number 1196649 (class 37) – HONEY I SCRATCHED THE CAR - in the name of Superfinish Automotive Pty Ltd as trustee for the Superfinish Trust.

Delegate:                 Nicole Worth

Representation:       Applicant: Howard Packer, counsel, instructed by Patent Sense

Opponent: Self-represented

Decision:                   2021 ATMO 104

Trade Marks Act 1995 (Cth) – application for partial removal under s 92(4)(b) – opposition to removal under s 96 – use of trade mark established in respect of disputed services and services similar to them - trade mark to remain registered for all services

Background

1.  Superfinish Automotive Pty Ltd (‘Removal Opponent’) as trustee for the Superfinish Trust is the owner of trade mark registration 1196649, detailed below: 

Trade Mark:             HONEY I SCRATCHED THE CAR (‘Trade mark’)

Filing Date:               31 August 2007

Services:Class 37: Construction and repair services including vehicle servicing and maintenance, vehicle washing and cleaning, vehicle detailing; vehicle service stations; the provision of personal vehicle services and maintenance; spray painting; minor panel beating; non collision repairs.

2.  On 10 July 2019 Honey’s Group of Companies Pty Ltd (‘Removal Applicant’) filed an application under s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’)[1] for partial removal of the Trade Mark. The services sought to be removed are ‘vehicle washing and cleaning; vehicle detailing’ (‘Disputed Services’).

[1] Unless otherwise stated, each reference to a section or regulation in these reasons is a reference to the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth).

3.  The application for removal was advertised and the Removal Opponent filed a Notice of Intention to oppose the application on 10 September 2019 followed by a Statement of Grounds and Particulars on 10 October 2019. The Removal Applicant filed a Notice of Intention to Defend the removal application on 12 December 2019.

4.  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 25 June 2021. The Removal Applicant was represented by Howard Packer of counsel, instructed by Patent Sense, who made verbal and written submissions on its behalf. The Removal Opponent was represented by Dean Bruckshaw, the chief executive officer of the Removal Opponent, who made verbal and written submissions on its behalf.

Legislative Framework

5. The subject application for removal has been made under s 92(4)(b), which relevantly 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) …

(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.

6. Section 92(4)(b) is subject to s 93(2), which stipulates that a non-use application made under s 92(4)(b) may not be made before a period of 5 years has passed from the filing date of the application to register the trade mark.[2] Given that the application to register the Trade Mark was made in 2007 this requirement is satisfied.

[2] Trade Marks Act 1995 (Cth) s 93(2) as it stood prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 sch 1 pt 3).

7. The three year period referred to in s 92(4)(b) is the three year period ending on 10 June 2019 (‘Relevant Period’).

8. Section 96 allows for a person to oppose an application for removal by filing a notice of opposition, and s 100(1)(c) places the onus to rebut an allegation made under s 92(4)(b) on an opponent. Section 100(3) states, inter alia, that the opponent is taken to have rebutted the allegation if it establishes that the trade mark (without additions or alterations substantially affecting its identity) was used in good faith by the registered owner during the relevant period; or that there were circumstances that were an obstacle to use (the latter is not being pursued here).

9.  Section 101(1) provides that the Registrar may remove a trade mark for any or all of the goods or services to which the application for removal relates, if satisfied that the grounds for removal are established. Alternatively, s 101(3) bestows upon the Registrar a discretion not to remove a trade mark, even where the grounds for removal are established. Section 101(4) provides two examples of matters the Registrar may take into account in deciding whether to exercise the discretion, being use of a trade mark in respect of similar services or closely related goods, or vice versa, but does not limit the matters the Registrar may take into account.

1. I proceed on the basis that the standard of proof required of the Removal Opponent is on the balance of probabilities.[3]

   [3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52 of the Act.

Evidence

1. The evidence filed in this matter comprises declarations by the following persons:

   Evidence in support

   Dean Bruckshaw, Chief Executive Officer of the Removal Opponent, with annexures DB01 to DB20, dated 12 March 2020 (‘Bruckshaw 1’).

   Evidence in answer

   Dawn Alvaro, Director of the Removal Applicant, with exhibits A to E, dated 15 June 2020 (‘Alvaro’).

   Evidence in reply

   Dean Bruckshaw dated 14 August 2020 (‘Bruckshaw 2’).

2. A summary of the evidence is as follows.

The Removal Opponent

1. The Removal Opponent is part of a corporate group, the Superfinish Group, which operates the HONEY I SCRATCHED THE CAR business. It is declared that the business provides all of the services for which the Trade Mark is registered, including the Disputed Services. The business was originally intended to operate under a franchise structure and a number of franchises of the business were in operation until late 2015 in various locations around South-East Queensland. The Superfinish Group operates two company-owned stores at Redcliffe and Bowen Hills.

2. The Superfinish Group has operated a website at the domain name honeyiscratchedthecar.com.au since at least September 2009. Extracts from the Internet Archive’s Wayback Machine, a digital archive of (amongst other things) web pages over time, shows use of the Trade Mark at that domain name since 30 September 2009. Primarily the services advertised on the web pages are related to same-day minor repairs: ‘We fix: Dings & Dents; Car Park Scratches; Bumper Scuffs; Alloy Wheel Damage; Leather Scuffs; All Minor Repairs’[4] and ‘Honey I Scratched the Car is a retail operation that provides same day accident repair to minor collision damage as well as cosmetic repairs to vehicles such as paint scratches, small dents, alloy wheels, scrapes and bumper bar scuffs using highly innovative S.M.A.R.T. technology’.[5] One extract, dated 18 February 2017 and therefore within the Relevant Period, states ‘Our services also include:…car detailing’, as shown below with the relevant text circled in the second panel and enlarged in the last panel.[6]

[4] Bruckshaw 1, annexure DB04.

[5] Bruckshaw 1, annexure DB 07.

[6] Bruckshaw 1, annexure DB15.

1. The Superfinish Group also operates Facebook® pages for the HONEY I SCRATCHED THE CAR franchise and each of the Redcliffe and Bowen Hills premises. A screenshot of a Facebook® post from within the Relevant Period mentions a ‘free wash and polish’, as shown below:[7]

[7] Bruckshaw 1, annexure DB16, dated 8 November 2018.

1. A further screenshot of a Facebook post from within the Relevant Period is provided which is declared to show the Disputed Services.[8] The post depicts the headlights of a car receiving a treatment. The text in the post says ‘Want to spruce up your car pre-sale. Or just want your car to look loved?’ and explains that headlights often age first due to the sun oxidising the coating on their cover. The post then states ‘we can make them look like new in just a few hours’.

   [8] Bruckshaw 1, annexure DB17, dated 10 April 2019.

2. Images from Google Maps Street View taken within the Relevant Period show street signage prominently displaying the Trade Mark at the Redcliffe and Bowen Hills premises. Of the additional text legible in the street signage, there appears to be no specific mention of the Disputed Services as opposed to ‘scratches’, ‘small dents’, ‘alloy wheel damage’ and ‘bumper scuffs’.

3. A bundle of sample invoices dated within the Relevant Period which list the Disputed Services is provided. Details such as customer names, contact numbers and vehicle registration numbers are redacted. Some of these invoices are disputed by the Removal Applicant, as will be discussed later in this decision.

4. Of dealings with the Removal Applicant, Mr Bruckshaw states that Mr David Alvaro, a deponent for the Removal Applicant and apparently spouse[9] of the Removal Applicant’s director, approached the Superfinish Group to purchase a Superfinish Express franchise in 2016. The Superfinish Express franchise is declared to be similar to the HONEY I SCRATCHED THE CAR business and operated by another company in the Superfinish Group. A franchise agreement was executed and Mr Alvaro received training in the Superfinish Express business at the Redcliffe premises, where operations for both franchises are housed.

   [9] According to Alvaro, exhibit B.

5. The Removal Applicant was incorporated on 29 May 2018, with Ms Dawn Alvaro as its sole director and shareholder. On 1 June 2018 the Removal Applicant registered the business name HONEYS AUTOMOTIVE DETAILING and since at least that date, Mr Bruckshaw declares, has provided vehicle detailing, vehicle cleaning and minor vehicle repair services. He further declares that Mr Alvaro is significantly involved in the operations of that business.

6. Lastly, Mr Bruckshaw notes that there is a legal dispute between Mr Alvaro and the Superfinish Group. Mr Alvaro was issued with a notice to remedy a breach of the franchise agreement on account of his involvement in the HONEYS AUTOMOTIVE DETAILING business. One month later the Removal Applicant commenced the subject non-use proceedings.

The Removal Applicant

1. The Removal Applicant claims that the HONEY I SCRATCHED THE CAR business does not advertise or provide the range of services for which the Trade Mark is registered, including the Disputed Services. According to the Removal Applicant, the Trade Mark is used to advertise and promote only ‘spray painting, minor panel beating and non-collision repairs’.

2. The Removal Applicant provides evidence that, as of 13 March 2020, the Bowen Hills store was for sale. The sale listing, on a website ‘ identifies the business as ‘Profitable – Car Dent Repairers For Sale’. The Removal Applicant states that the listing makes no mention of detailing services provided by the business, and that there are no photos in the listing’s gallery of a wash bay, detailing bay or detailing equipment (rather, a spray booth for panel paint repairs is declared to be shown).

3. In respect of the bundle of invoices in the Removal Opponent’s evidence, the Removal Applicant declares that they ‘have been confirmed to be false invoices’. The bases for this claim are alleged telephone conversations between, firstly, Mr Alvaro and a former employee of the HONEY I SCRATCHED THE CAR business (recounted in exhibit B of Alvaro) and secondly, Ms Alvaro and a customer of the HONEY I SCRATCHED THE CAR business (recounted in exhibit C of Alvaro).

4. Exhibit B of Alvaro is a declaration of Mr David Alvaro which states ‘The following is a transcript of 3 telephone conversations between myself, Mr David Alvaro, -DA, and Mark Greer, MG, on Tuesday June 9, 2020’ (Mark Greer being the former employee of the HONEY I SCRATCHED THE CAR business). It does not appear to be a full transcript of the entire conversations because, at the very least, there are no salutations, and it is said to be a confirmation of a conversation held between the two approximately two weeks earlier. In summary the exchange alleges that invoices listing Mr Greer as having washed and detailed cars as a standalone service are false, with one invoice in particular discussed which lists ‘Hand Wash & Wax’ but was allegedly for repairs instead. Further allegations involving various other people in the Removal Opponent’s business are declared to have been made by Mr Greer, however it is not necessary to recount them here.

5. Exhibit C of Alvaro is Ms Alvaro’s transcription of an extract of a conversation between herself and the customer of one of the invoices in the Removal Opponent’s evidence (being the same invoice as was discussed in detail between Mr Alvaro and Mr Greer). The transcript is not of the entire conversation – Ms Alvaro prefaces the transcript with ‘The following transcription includes extracts from a conversation on 6 April 2020’. It is not clear how Ms Alvaro obtained the name or contact details of the customer, given they are redacted in the Removal Opponent’s evidence. Nonetheless Ms Alvaro appears to have contacted the customer under the guise of, possibly, an employee of the Removal Opponent. Ms Alvaro states to the customer that she has ‘randomly picked some invoices’ and she is ‘checking a couple of details on that invoice’ before allegedly ascertaining that the service provided to the customer was a repair and not a hand wash and wax. According to Ms Alvaro ‘The integrity of the information in the invoices provided in annexure DB18 [of the Removal Opponent’s evidence] is compromised with the confirmation of falsified invoice number 214322 [being the invoice discussed with the customer].’

6. Ms Alvaro also adduces extracts of a conversation between herself and an employee of the HONEY I SCRATCHED THE CAR business at the Bowen Hills premises.[10] Ms Alvaro declares she spoke to an employee named Steve wherein she requested a booking to get her car sears shampooed. Steve allegedly said, amongst other statements: ‘We don’t do interiors’, ‘We are not specific detailers. We do repairs’, and ‘You would be better off using a full-on detailer. That’s all they do’. Allegedly he said the same of the Redcliffe premises.

   [10] Alvaro, exhibit D.

7. Of annexure DB15 in the Removal Opponent’s evidence, being the web page stating ‘Our services also include…car detailing’ described in paragraph 14, The Removal Applicant notes that there is also an annotation on that page which states ‘Not all services available in all locations’.

8. Of the Facebook® posts in the Removal Opponent’s evidence the Removal Applicant states that the person in annexure DB16 took his car in for repairs and not for ‘vehicle washing and cleaning’ or ‘vehicle detailing’. The Removal Applicant also alleges that the Facebook® post in annexure DB17 depicts a headlight prepared for repair, not detailing (which the Removal Applicant says ‘is no more than a polish’).

9. Lastly the Removal Applicant adduces a declaration from Wayne McFarlane, a former employee of ‘Superfinish Express’. He declares that ‘David Alvaro came to me as a new franchisee and I trained him [for approximately two weeks]’. Mr McFarlane explains that the HONEY I SCRATCHED THE CAR business was also housed at the premises where he trained Mr Alvaro. He declares however that the training was provided in a different shed or in the lunch room of the main office building, and ‘To my knowledge David had no access to any [HONEY I SCRATCHED THE CAR] systems, processes or materials, physical or otherwise’.

Discussion

1. I must first decide whether there has been use of the Trade Mark upon the Disputed Services during the Relevant Period. If I am so satisfied, then the Removal Opponent will have rebutted the allegation under s 92(4)(b) and its opposition will succeed. If I am not so satisfied, then I must decide whether to exercise the discretion afforded by s 101(3) to allow the Trade Mark to remain registered for any or all of the Disputed Services.

Use of the Trade Mark During the Relevant Period

1. A single bona fide use of a trade mark during the relevant period may be sufficient to resist an application for removal.[11] Where a removal opponent relies on only one, or few, instances of alleged use, such instances should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[12] The use must be in good faith, in the sense that it be real, as opposed to token, use in a commercial sense.[13] The decision maker may not be persuaded by evidence that is solely from the internal files of an opponent[14] or of a circumstantial nature.[15]

   [11] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J) (‘Woolly Bull’).

   [12] Nodoz Trade Mark [1962] RPC 1, 7 (Wilberforce J) (‘Nodoz’).

   [13] Woolly Bull (n 11) [16].

   [14] Nodoz (n12).

   [15] Trina Trade Mark [1977] RPC 131.

2. I am satisfied that the Removal Opponent has provided evidence sufficient to rebut the allegation of non-use. The Internet Archive’s Wayback Machine extract dated 18 February 2017, in annexure DB15 of the Removal Opponent’s evidence, clearly states that ‘car detailing’ is a service that is provided. The fact that it is not the primary service advertised does not, of itself, render that use token or not in good faith. It is direct evidence from an external source of the Trade Mark being used to advertise the service during the Relevant Period.

3. Similarly, the Facebook® post in annexure DB16 is primarily related to repairs that were made to a car. However, the statement ‘…but we gave him a free wash and polish for his patience’ indicates that a ‘wash and polish’ is nonetheless a service provided. As to the Facebook® post in DB17, wherein a car headlight is receiving a treatment, there is nothing to support the Removal Applicant’s contention that a detail would involve no more than a polish. Neither party has adduced evidence as to what would normally be considered in the industry or by the public to be vehicle detailing, as opposed to vehicle repairs. My own understanding is that vehicle detailing largely involves cosmetic services where the functionality of the vehicle remains unaffected. The headlight treatment described in the post would seem to fall within that. Nonetheless, I would be satisfied that the allegation is rebutted on the basis of the evidence otherwise described.

4. Taken at face value the bundle of invoices at annexure DB18 of the Removal Opponent’s evidence provides support for use being made of the Trade Mark in respect of the Disputed Services. However they would not necessarily be conclusive of themselves: they appear to be documents created internally by the Removal Opponent and they are not corroborated by, for example, banks statements showing corresponding amounts received or statements from any of the payees. As to the Removal Applicant’s contentions that one or more of the documents have been ‘confirmed to be false’, I consider that the evidence purportedly demonstrating this is itself problematic. It comprises extracts of conversations, rather than full transcripts, prepared by persons with a vested interest in the outcome of the subject dispute. They are not corroborated by any statements from the persons with whom the conversations were allegedly held. The Removal Applicant has also remained silent as to how the contact details of the customer with whom Ms Alvaro spoke were obtained, raising a question over the Removal Applicant’s own conduct. For its part the Removal Opponent expressly rejects the allegation that the invoices are false. It says that Mr Greer is a disgruntled ex-employee and even if the authenticity of the conversations between him and Mr Alvaro could be ascertained, the truthfulness of his statements would be questionable. The Removal Opponent also points to Ms Alvaro’s own conduct in contacting its customer, although it does not expressly say whether or not the invoice in dispute is correct.

1. The conversation between Ms Alvaro and employee Steve could provide support for the removal application, but not in the face of evidence which shows the services have been advertised to the public. Of that conversation the Removal Opponent disputes its authenticity, and points out that Ms Alvaro makes no mention of calling other stores at other times wherein more senior staff would have confirmed the services are indeed offered.

2. The sale listing of the business describes it as a ‘car dent repairer’ and again, could provide support for the removal application in the absence of evidence to the contrary or where the only evidence of use was created internally by the Removal Opponent. However, that is not the case. I note also that the sale listing falls outside of the Relevant Period. For its part the Removal Opponent says that the listing was created by a business broker and the wording he used is irrelevant to the day-to-day operation of the business and its usage of its trade marks.

3. In its submissions the Removal Applicant also contends that the alleged paucity of evidence relating to the Disputed Services is telling, with 12 invoices in total, amounting to a little less than $2500, suggesting token use as opposed to genuine commercial use. I am not persuaded that this is the case. There is nothing to suggest that the web pages in DB15, or the Facebook posts in DB16 and DB17, were manufactured to defeat a potential non-use allegation or for any reason other than genuine commercial use.

4. Whilst the evidence of use of the Trade Mark in respect of the Disputed Services during the Relevant Period is not extensive, I consider it sufficient to resist removal. It is not disputed that the Trade Mark has been used in respect of minor repairs for vehicles during the Relevant Period. In the absence of evidence to the contrary, I would consider these to be services at least similar to the Disputed Services.[16] There are also at least two instances, shown in annexures DB15 and DB16, that are explicitly in relation ‘car detailing’ and a ‘wash and polish’ respectively.

   [16] Being a circumstance relevant to the exercise of the discretion, per s 101(4).

5. The prior existing circumstances between the parties seem to suggest further that there is a connection between the Disputed Services and the kind of minor repairs the Removal Opponent offers. Mr Alvaro operates one of the Removal Opponent’s Superfinish Express franchises, through which he provides repair services.[17] His spouse’s company HONEY’S AUTOMOTIVE DETAILING (in which Mr Alvaro is apparently significantly involved) is in the business of vehicle detailing. This would suggest related skills and/or equipment are involved in the provision of those services. That the Superfinish Group has issued a breach of franchise agreement to Mr Alvaro because of his involvement in the HONEY’S AUTOMOTIVE DETAILING business suggests that it too considers the services and/or the name under which they are offered are similar.

   [17] Alvaro, [48].

6. For the reasons above I consider it appropriate to maintain the registration in respect of the Disputed Services.

Decision and costs

1. The Removal Opponent has established use of the Trade Mark in relation to the services the subject of the removal application as well as services that are similar to them. Accordingly, I refuse to remove the Trade Mark in respect of the Disputed Services, and the specification of the Trade Mark registration will remain unchanged.

2. Given the Removal Opponent has represented itself in these proceedings, it is not appropriate to make an award costs and I decline to do so.

Nicole Worth
Hearing Officer
Trade Marks & Designs Hearings and Oppositions

17 September 2021