Oppositions by Cohga Pty Ltd to applications by Google LLC for removal of trade marks 1432371 (9) WEAVE BUSINESS INTEGRATION FRAMEWORK (figurative) and 1432378 (9) WEAVE BUSINESS INTEGRATION FRAMEWORK (figurative)...

[2020] ATMO 189

TRADE MARKS ACT 1995

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

ReOppositions by Cohga Pty Ltd to applications by Google LLC for removal of trade marks 1432371 (9) WEAVE BUSINESS INTEGRATION FRAMEWORK (figurative) and 1432378 (9) WEAVE BUSINESS INTEGRATION FRAMEWORK (figurative) both in the name of Cohga Pty Ltd

Delegate:                 Robert Wilson

Representation:       Opponent: Andrew Sykes of Counsel, instructed by Actuate IP

Applicant: Lucy McGovern of Counsel, instructed by Gilbert + Tobin Lawyers

Decision:                   2020 ATMO 189

Trade Marks Act 1995 (Cth) - Section 96 opposition: oppositions to applications for removal pursuant to s 92(4)(b) unsuccessful – no use of trade marks during relevant period – not reasonable to exercise discretion in favour of opponent – trade marks to be removed from Register

Background

1. Cohga Pty Ltd (‘the Opponent’) is the registered owner of the two trade mark registrations detailed below:

Trade Mark Number:

1432371

Filing Date:

27 June 2011

Specification:

Class 9: Computer software; computer software (programs); computer software designed to estimate costs; computer software designed to estimate resource requirements; computer software downloaded from the Internet; computer software for accounting systems; computer software for analysing address files; computer software for analysing market information; computer software for business purposes; computer software for communicating purposes between microcomputers; computer software for communication between computer processes; computer software for processing address files; computer software for processing market information; computer software for the analysis of defects; computer software packages; computer software products; computer software programs; interactive computer software

(‘the Challenged Goods’) [1]

Trade Mark:

[1] The Challenged Goods are all of the goods and services for which the trade mark is registered.

Trade Mark Number:	1432378
Filing Date:	27 June 2011
Specification:	The Challenged Goods [2]
Trade Mark:

[2] The Challenged Goods are all of the goods and services for which the trade mark is registered.

2. It is necessary in this decision to refer to a number of trade marks. For the sake of clarity, hereafter the two trade marks, above, will be referred to collectively as ‘the Opponent’s Trade Marks’. References to the individual trade marks will be, respectively, ‘FCM’ (being an abbreviation of ‘First Challenged Mark’) and ‘SCM’ (being an abbreviation of ‘Second Challenged Mark’). References to other trade marks will be provided as necessary.

3. Unless otherwise indicated, any references to parts, sections or regulations, below, are references to parts or sections of the Trade Marks Act 1995 (Cth) or regulations of Trade Marks Regulations 1995 (Cth).

4. On 16 August 2018, Nest Labs Inc filed applications (‘the Applications’) based on s 92(4)(b) seeking removal of the Opponent’s Trade Marks from the Register. The Applications alleged that the Opponent’s Trade Marks had not been used in good faith in relation to the Challenged Goods during the three year period ending on 16 July 2018 (‘the Relevant Period’). Nest Labs Inc was subsequently replaced by Google LLC as the applicant for removal. A reference to ‘the Applicant’ in this decision is a reference to Google LLC.

5. The Opponent filed Notices of Opposition consisting of Notices of Intention to Oppose which were filed on 3 September 2018 and Statements of Grounds and Particulars which were filed on 3 October 2018. The Removal Applicant filed Notices of Intention to Defend on 29 October 2018.

Evidence

6. Both oppositions relied on the same evidence. The Opponent filed Evidence in Support (‘EIS’) which consists of:

·Declaration made on 12 February 2019 by Gustavo Dominguez, the director of the Opponent, with Annexures GD-1 to GD-17 (‘Dominguez 1’).

7. The Applicant filed Evidence in Answer (‘EIA’) which consists of:

·Declaration made on 22 July 2019 by Matthew Golab, the Director, Legal Informatics and R+D, at Gilbert + Tobin (‘the Golab declaration’). Gilbert + Tobin are the legal representatives of the Applicant. The Golab declaration includes a single exhibit which is marked Exhibit A.

8. The Opponent filed Evidence in Reply (‘EIR’) which consists of:

·Declaration made on 21 October 2019 by Gustavo Dominguez with Annexure GD-18 (‘Dominguez 2’); and

·Declaration made on 20 December 2019 by Aiyaswami Mohan, an independent strategic advisor at Landfall Advisory Pty Ltd (‘the Mohan declaration’). The Mohan declaration includes a single annexure which is marked Annexure AM‑1. Landfall Advisory Pty Ltd (‘Landfall’) is described as ‘a Melbourne based technology consulting firm which provides business and technology advisory services’.

9. Once the time allowed for filing evidence had ended the parties requested to be heard. I heard the matter on 25 September 2020 as a delegate of the Registrar of Trade Marks. Andrew Sykes of Counsel, instructed by Actuate IP, appeared for the Opponent. Lucy McGovern of Counsel, instructed by Gilbert + Tobin Lawyers, appeared for the Applicant. Counsels’ oral submissions were supplemented by written submissions which were filed prior to the hearing.

10.     Prior to the hearing the Opponent also filed a declaration, made on 11 September 2020, by Cameron Lang (‘the Lang declaration’). Mr Lang is a lawyer at Actuate IP. The purpose of the declaration was the re-filing of certain annexures filed as part of Dominguez 1. Mr Lang declared:

It has recently been identified that, due to a technical error, a number of Annexures originally filed do not display correctly. [The Opponent] requests, pursuant to Regulation 21.19 … , that the Delegate substitute the correct Annexures provided with this declaration for the inadvertently altered Annexures originally filed.

11.     The Lang declaration provided details of the particular annexures which were affected by the technical error. The Applicant was asked prior to the hearing if it had any objection to the refiled documents being considered as part of the evidence. The Applicant responded that it did not object ‘on the proviso only that the material therein is comprised of better quality Annexures to [Dominguez 1], duplicating the original Annexures’. The refiled annexures will be considered with that proviso being taken into account. I note that the refiled annexures will be considered pursuant to reg 21.15, rather than the requested reg 21.19.

Confidentiality Claim

12.     As a preliminary matter, it is necessary that the following statement from Dominguez 1 be dealt with.

Information in, and annexures to, this Declaration are commercially sensitive as they relate to the busines affairs of [the Opponent] within the meaning of the Freedom of Information Act 1982 (Cth). Disclosure of such information or annexures or the information contained within them, would, or could reasonably by expected to, destroy or diminish the commercial value of that information. [The Opponent] therefore:

i.objects to the disclosure of such information, annexures and the information within them to third parties;

ii.claims exemption from disclosure of such information, annexures and the information within them pursuant to section 47 of the Freedom of Information Act 1982 (Cth); and

iii.requests that IP Australia observes and respects the exempt status of such information, annexures, and the information within them by not disclosing such information, annexures of information within them to any third parties.

13.     The above appears to be a blanket claim to confidentiality in respect of all information contained within Dominguez 1. Such blankets claims are unhelpful, especially where there is information which is already in the public domain, or, at least, asserted to be in the public domain, such as examples of use of trade marks. In this decision, I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim stated:

The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request … at face value, that would be the end of these matters.

This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[3]

[3] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6] (Thompson).

The Opponent

14.     According to Dominguez 1:

[The Opponent] commenced operations in 2006 as a software development company. Our key areas of expertise include systems integration software and site reviews which includes analysis of current IT and software systems defects. Our products and services are provided to clients throughout Australia and internationally, and we have offices in Melbourne, Brisbane, and Adelaide. …

[The Opponent’s] most important product is a computer software program called ‘WEAVE’ (‘WEAVE  computer software’). …

The WEAVE computer software was [the Opponent’s] first product, and development commenced in 2006. We first commenced marketing the WEAVE computer software to clients in or around mid-2007. We have marketed the WEAVE computer software ever since this date, and continue to market the WEAVE computer software.

The Applicant

15.     The Applicant has not provided any background information about itself that I might impart here.

Legal Framework

16.     Part 9 governs the removal of trade marks from the Register for non‑use. The sections of Part 9 which are most relevant to the case in hand are ss 92, 96, 100 and 101.

17.     The removal application specified that it was made according to the provisions of s 92(4)(b). Section 92 relevantly provides:

Section 92.  Application for removal of trade mark from Register etc

(1)  … a person may apply to the Registrar to have a trade mark that is … 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.

…

(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. 

Note 1: For file and month see section 6.

18.     An application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application to register a trade mark.[4] I confirm that period had passed in respect of both of the Opponent’s Trade Marks.

[4] Per s 93(2) of the Act prior to the amendments made to the Act as a result of the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) as applies in the present matter.

19.     Sections 100(1)(c) and 100(3) indicate that the Opponent bears the onus of rebutting the allegations made under s 92(4)(b), either by establishing that the Opponent’s Trade Marks were used in good faith in Australia during the Relevant Period, or that there was a relevant obstacle to use. I proceed on the basis that the standard of proof required is on the balance of probabilities.[5]

[5] Following Gyles J’s approach in Pfizer Products Inc v Karam (2006) 70 IPR 599 with respect to oppositions under s 52 of the Act. See also the recent decision of the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [132]-[133] affirming Gyles J’s approach.

20.     Section 101(1) provides the Registrar with the discretion to remove the Opponent’s Trade Marks from the Register in respect of any or all of the good to which the Applications relate. Section 101(3) explicitly provides that the Registrar has the discretion not to remove one, or both, of the Opponent’s Trade Marks (if the Registrar is satisfied that it is reasonable to do so), even if the grounds on which the Applications were made have been established.

Discussion

21.     To successfully rebut the allegation of non-use the Opponent must establish that it, as the owner of the Opponent’s Trade Marks has used the Opponent’s Trade Marks in the course of trade in respect of all the Challenged Goods, in good faith, in the Relevant Period. The date range forming the Relevant Period is crucial in a non-use matter. It is incumbent upon the Opponent to provide clearly dated evidence showing use of the Opponent’s Trade Marks upon, or in physical or other relation to the Challenged Goods[6] within that period in order to rebut the allegation of non-use. Undated examples or examples of use outside of the Relevant Period do not assist the Opponent unless their dates can be corroborated by other evidence of record.

[6] See Trade Marks Act 1995 (Cth) s 7.

22.     Much of the Opponent’s evidence consists of documents which are clearly undated, dated outside of the Relevant Period or use is stated to be outside of the Relevant Period, for example, ‘current screenshots of [the Opponent’s] website’. As a consequence, the following annexures to Dominguez 1 do not assist the Opponent: GD-3, GD-5, GD-7, GD-9, GD‑12, GD-13, GD-14, GD-16. The remaining annexures to Dominguez 1 are considered, below. Dominguez 2 does not purport to exhibit evidence of use of the Opponent’s Trade Marks.

23.     Dominguez 1 includes some statements about sales figures, for the 2018 financial year, related to ‘the WEAVE computer software’ and for ‘installation, customisation and support services for the WEAVE computer software’. The declaration also includes a list of Australian business which are stated to be ‘some of [the Opponent’s] clients for the WEAVE software product’. I note that the 2018 financial year falls wholly within the Relevant Period. Given what is contained in those statements it is surprising that no copies of invoices are provided in the Opponent’s evidence. Such evidence is amongst the most straightforward ways for a business to demonstrate use of a trade mark at a particular time.

Variations of the Opponent’s Trade Marks

24.     The Opponent has provided evidence of use of a number of variations of the Opponent’s Trade Marks. It is useful at this point to consider whether the use of any of those variations constitutes use of either of the Opponent’s Trade Marks.

25.     The trade mark shown below left (‘SCM V1’—representing an abbreviation of ‘Second Challenged Mark Variation 1’) is one variation which appears in the Opponent’s evidence. The Opponent submitted that use of SCM V1 constitutes use of SCM. The Applicant took the contrary view and submitted that SCM V1 is not substantially identical to SCM. SCM is shown below, right for comparison.

26.     Section 100 provides that if use of SCM V1 is use of SCM ‘with additions or alterations that do not substantially affect [its] identity’, then that use can be taken to be use of SCM. The words just quoted have essentially the same meaning as ‘substantially identical’, as appears in s 44. Such substantial identity requires that when trade marks are compared side by side ‘a total impression of similarity’ emerges.[7]

[7] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375, 391.

27.     There are two notable alterations to SCM to be found in SCM V1. The first is the absence of the words ‘Business Integration Framework’—those words are descriptive of a type of software. It follows that when used in respect of the Challenged Goods those words do not form an essential element of SCM and their absence is not an alteration which substantially affects the identity of SCM. The second alteration is the relocation of the word ‘Weave’ from alongside the device element, to below it. This change to the positioning of that word is also not an alteration which substantially affects the identity of SCM. SCM V1 and SCM are ‘exactly similar in everything that matters for all relevant purposes’.[8] Consequently, I find that use of SCM V1 constitutes use of SCM.

[8] Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd [2003] FCA 901, [58].

28.     According to Dominguez 1, SCM was developed in or around 2010. Further, ‘[f]or Technical reasons, it is often necessary to use the tile featuring the individual strands being weaved together alone—that is, without the words WEAVE or BUSINESS INTEGRATION FRAMEWORK—as an icon’, (‘the W Tile’). For illustration purposes, SCM and the W Tile, respectively, are shown below. The absence of the word ‘Weave’ from the W Tile is an alteration to SCM which substantially affects the identity of SCM; consequently, use of the W Tile does not constitute use of SCM.

29.     It is stated in Dominguez 1, that the Opponent’s Trade Marks had their genesis in a decision to use the plain word WEAVE (‘the WEAVE Word Mark’) in around 2007. The Opponent then developed two logo versions of the WEAVE Word Mark, shown below:

Challenged Mark Variation 1 (‘FCM V1’)

Challenged Mark Variation 2 (‘FCM V2’)

30.     FCM V1 does not appear in any documents dated during the Relevant period. That trade mark need not be considered further. Any documents which include FCM V2 which might have fallen within the Relevant Period do not assist the Opponent for reasons discussed below. Consequently, this trade mark also need not be considered further.

31.     The WEAVE Word Mark can be considered to be either of the Opponent’s Trade Marks with alterations. In each case those alterations substantially affect the identity of the Opponent’s Trade Marks; consequently, use of the WEAVE Word Mark does not constitute use of either of the Opponent’s Trade Marks. It is declared in Dominguez 1 that

the WEAVE Word Mark is featured extensively on all of the business documents used for the WEAVE computer software, including licence agreements, end-user licence agreements, price lists, quotations, and invoices’.

This statement may explain the absence of this type of document from the Opponent’s evidence. Presumably, it is the WEAVE Word Mark, rather than the Opponent’s Trade Marks which appear on those documents.

32.     For completeness, there are sufficient differences between them that the Opponent’s Trade Marks are not substantially identical to each other. Most notably, the W Tile device which appears in SCM does not appear in FCM. Consequently, use of one does not constitute use of the other.

Opponent’s Wayback Machine evidence

33.     The Opponent has provided in Annexure GD-8 what is asserted to be evidence of use of trade marks—including variations discussed above—on its website during the Relevant Period. The evidence is provided as archived pages obtained from the Wayback Machine internet archive service. The Applicant has criticised this evidence on two bases. Firstly, that the Wayback Machine evidence is unreliable, and secondly that the Opponent’s website is a foreign website not an Australian website. I will consider these two criticisms in turn.

34.     Greenwood J considered the reliability of Wayback Machine evidence (‘WM evidence’) in King Par LLC v Brosnan Golf Pty Ltd.[9] His Honour found that in respect of images which appear on archived internet pages, ‘I cannot be satisfied as to the accuracy of the dates of archive of those images on any of the websites to which they are attributed by the W M search engine’.[10] His Honour’s view was based on how the HTML file on which a web page is based is archived separately from the images to which the HTML file refers, and that as a result ‘images that appear on a particular page may not have been archived as at the same date as the HTML file’. In another case, on cross-examination, an IT expert, listed as ‘A key witness on the central issues’ in Harcourts WA Pty Ltd v Roy Weston Nominees Pty Ltd (No 4), ‘accepted that the Wayback Machine can be unreliable’.[11] The shortcoming of WM Evidence as far as the dating of images is concerned was confirmed by the expert witness[12] in Dyno Nobel Inc v Orica Explosives Technology Pty Ltd[13] and Pinnacle Runway Pty Ltd v Triangl Limited.[14]

[9] [2014] FCA 795.

[10] Ibid [168].

[11] [2016] FCA 138, [187].

[12] The same expert witness appeared in both matters, being Christopher Butler, the office manager at the Internet Archive, the organisation which operates the ‘Wayback Machine’.

[13] [2019] FCA 1552, [4].

[14] [2019] FCA 1662, [107].

35.     The Opponent’s WM evidence provides examples of the use of trade marks which are images. There is nothing before me which satisfies me that the Opponent’s WM evidence is any more reliable than the WM evidence which was before Greenwood J. Consequently, I am not satisfied as to the accuracy of the dates of archive of the images of trade marks which appear in the Opponent’s WB evidence.

36.     The domain name of the Opponent’s archived website is The Applicant submitted:

The website is not an Australian website … As stated in Ward Group Pty Ltd v Brodie & Stone PLC,[15] the appearance of a trade mark on the internet, uploaded on a website outside Australia, is not, without more, use of the trade mark by the website proprietor in each of the jurisdictions where the mark is downloaded. Mr Dominguez asserts that the website was targeted to Australian consumers, but this bare assertion should be given little weight.

[15] [2005] FCA 471, [43].

I am inclined to the Applicant’s view.

37.     Given the shortcomings just discussed, I am not inclined to attribute any significant weight to the WM evidence; consequently, Annexure GD-8 does not assist the Opponent in establishing use of the Opponent’s Trade Marks during the Relevant Period.

Use of FCM

38.     Whether the Opponent’s remaining evidence demonstrates use of FCM during the Relevant Period will be considered first.

39.     Annexures GD-1, GD-2, GD-4, GD-6, GD-10, GD-11 and GD-15 do not contain FCM or what might be considered a variation of FCM. Annexure GD-17 consists of four documents, only one of which bears FCM. That document is declared to be ‘a PowerPoint slideshow prepared for the Department of Industries dated 27 June 2007’ (some eight years before the Relevant Period). There is no evidence that this document was used during the Relevant Period. Consequently, none of these annexures assist the Opponent. There is, then, nothing before me which satisfies me that FCM was used by the Opponent during the Relevant Period in respect of any goods or services. Consequently, the grounds on which the application to remove FCM was made have been established.

Use of SCM

40.     Whether the Opponent’s evidence demonstrates use of SCM during the Relevant Period will now be considered.

41.     Annexures GD-1, GD-2, GD-4 and GD-15 to Dominguez 1 all exhibit documents which are described as case studies. For example, with respect to Annexure GD-2 it was declared that:

In partnership with the Queensland Government Department of Aboriginal and Torres Strait Islander Partnerships (‘DATSIP’), we used the WEAVE computer software to develop an online interactive application known as the Cultural Heritage Register and Information System to provide efficient and user-friendly access to cultural heritage information maintained in accordance with the Aboriginal Cultural Heritage Act 2003) (Qld) and the Torres Strait Islander Cultural Heritage Act 2003 (Qld).

Now shown to me and marked Annexure GD-2 is a case study of the WEAVE computer software products and services provided to DATSIP.

The case study in GD-2 is dated September 2015 (within the Relevant Period). SCM V1 (which is reproduced below for ease of reference) appears in a side column of all the case studies. The Applicant submitted that, ‘it is unclear how [the Opponent] used the document at Annexure GD-2. There is no evidence of when the parties entered the contract described in the case study …’.

42.     It is declared in Dominguez 1:

[The Opponent] distributes case studies for notable projects completed for clients using the WEAVE computer software detailing how the WEAVE computer software has been used. These case studies use the WEAVE Trade Marks and are distributed to clients for promotional purposes. The case studies are also made available via [the Opponent’s website].

43.     On the basis of the discussion regarding the Opponent’s website, above, I am not satisfied that, without more the case studies being available on the Opponent’s website constitutes use of SCM V1 in the course of trade in Australia. The date which appears on the case studies, presumably indicates when the particular case study was produced. From that point of view, and given the nature of the documents, the date is somewhat unimportant—they are all dated prior to the end of the Relevant Period, some prior to the start of the Relevant Period. What is important is when the case study was distributed, which, despite the date which appears on it, may have been during the Relevant Period, or not. Details regarding distribution are not provided. Consequently, I am unable to be satisfied that any of the case studies was distributed during the Relevant Period, rather than, say, simply sitting on a bookshelf collecting dust. For this reason, Annexures GD-1, GD-2, GD-4 and GD‑15 do not assist the Opponent.

44.     Annexures GD-6 and GD-10 are declared to each be ‘a screenshot of the WEAVE computer software product installer in operation which shows how [SCM] is used’. The single page annexures are, for all intents and purposes, identical. GD-6 is provided below in its entirety for ease of reference. As can be seen, SCM appears prominently. Dominguez 1 makes no assertions as to the date the installer shown was used or by whom. For example, given the statement in Dominguez 1 that ‘we also provide services relating to the installation … for the WEAVE computer software’ it may be that no-one other than an employee of the Opponent in the course of providing the Opponent’s services has ever seen the installer in operation—such use would not be use of SCM in the course of trade. The Applicant submitted that these annexures are undated. During the hearing, Mr Sykes, for the Opponent, indicated that the number ‘2.5.25.20180604’ contains the date of the installer—'20180604’, meaning 4 June 2018 (within the Relevant Period). A reservation I have about this information is that it seems to cross the, sometimes fine, line between submissions and evidence. Nevertheless, even were I to accept this information, it would not overcome the shortcoming of this evidence discussed earlier. GD-6 and GD-10 do not assist the Opponent.

45.     Dominguez 1 states:

Clients are provided with detailed user guides and system administrator guides for the WEAVE computer software. The WEAVE Trade Marks are used prominently in these guides. Up-to-date versions of these guides are available to clients at the ‘Weave Documentation Wiki’ ( which also prominently features the WEAVE Trade Marks.

Now shown to me and marked Annexure GD-11 are copies of the cover page and index pages for the June 2018 version of the WEAVE user guide and WEAVE system administrator guide respectively both of which feature [SCM].

46.     The documents in GD-11 have similar shortcomings to the case studies discussed above. Because of the nature of these documents, simply because they have dates which fall within the Relevant Period does not mean that any trade marks they bear have been used in the course of trade during the Relevant Period. The documents are dated approximately one month before the end of the Relevant Period. There is no indication whether the documents were provided to anyone during the Relevant Period. In the Applicant’s words:

[T]here is no primary evidence that the particular June 2018 user guide and system administrator guide were available at the Weave Documentation Wiki within the Relevant Period, or that any customers downloaded the documents.

This annexure does not assist the Opponent.

47.     Annexure GD-17 consists of four documents. The first document, ‘a PowerPoint slideshow prepared for the Department of Primary Industries dated 27 June 2007’ does not contain SCM or SCM V1 so does not assist the Opponent.. The second is ‘a consulting report prepared for the South Australian Police dated 20 June 2014’ (outside the Relevant Period). This document does not assist the Opponent. The third is ‘a proposal prepared for DATSIP dated 7 November 2018’ (outside the Relevant Period). This document does not assist the Opponent. The fourth document is ‘a monthly support report prepared for DATSIP dated 3 September 2015’ (within the Relevant Period) (‘the DATSIP Report’). This document warrants further consideration.

48.     The DATSIP Report is entitled ‘Monthly Support Report – Online Portal of the Cultural Heritage Database and Register – August 2015’. The four page report indicates that it was prepared on 3 September 2015. SCM V1 appears prominently at the top of the title page. The ‘Introduction’ to the document states, amongst other things:

This report provides a monthly summary of Support and Development activities provided by [the Opponent] to facilitate the operation of the Cultural Heritage Data Base and Register online portal.

In respect of this document the Applicant submitted:

[T]here is no evidence that Cohga provided the monthly support report to DATSIP or anyone else for that matter, or when that provision occurred. …

49.     I am prepared to accept that, on the balance of probabilities, a monthly report prepared specifically for an organisation was provided to that organisation shortly after the report was prepared. Given the date the document was prepared, there is no question that ‘shortly after’ would fall within the Relevant Period. I am satisfied that use of SCM V1 in the DATSIP Report is use in the course of trade in Australia. The question then arises, in connection with what goods or services? The Applicant submitted:

The document only relates to the provision of support services in relation to an online portal and not goods covered by [the Opponent’s Trade Marks].

The DATSIP report provides information about what support services are specified in the ‘Service Level Agreement’ and the quantity of support actually provided. The report indicates that ‘Support services started from the system acceptance date’. There is no indication in the report what ‘system’ was accepted. I agree with the Applicant’s assessment that the document relates to the provision of support services. Such services are clearly not part of ‘the Challenged Goods’. This annexure does not assist the Opponent.

50.     The Opponent has failed to satisfy me that either of the Opponent’s Trade Marks was  used in good faith by the Opponent in relation to the Challenged Goods during the Relevant Period.

Registrar’s Discretion

51.     There is a discretion available to the Registrar under s 101(3) not to remove one, or both of, the Opponent’s Trade Marks from the Register notwithstanding that the grounds on which the Applications were made have been established. As the Opponent pointed out, the discretion is a broad one limited only by the ‘subject-matter, scope and purpose of the legislation and, in particular by the subject-matter scope and purpose of Part 9’.[16] Part 9 is designed to protect the integrity of the register, however, it also ‘seeks to accommodate, where reasonable, the interests of registered trade mark owners’.[17]

[16] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [35].

[17] Ibid [38].

52.     The Opponent has made much of the importance of the Opponent’s Trade Marks, going so far as to submit that the WEAVE Software is the Opponent’s most important product. While it may well be that the WEAVE Software is of great importance to the Opponent, the importance of the Opponent’s Trade Marks is not demonstrated by the evidence. The Opponent has not provided multiple clearly dated examples of use of either of its trade marks during the Relevant Period. Given the quantum of the sales figures provided for the 2018 financial year, the provided list of high profile customers, and other statements about use of the trade marks, the absence of such evidence is puzzling to say the least. There was no evidence which established use of FCM during the Relevant Period in respect of any goods or services. There was only a single example provided which showed use of SCM during the Relevant Period but that use was in connection with services, not with the Challenged Goods.

53.     There is no explanation provided as why the Opponent has not provided evidence which, it is reasonable to expect, is fairly easy to obtain in the circumstances claimed. This tends towards a conclusion that the Opponent’s Trade Marks have, in reality, been little used, or not used at all, during a period where it is to be expected they might be frequently used given their stated importance. It appears that the Opponent is quite satisfactorily able to conduct a significant business based around the WEAVE Software without reliance on the Opponent’s Trade Marks. On this basis, I am not satisfied that it is reasonable to exercise the Registrar’s discretion in favour of the Opponent.

Decision

54.     The Applicant has established the grounds on which the Applications were made. I decide therefore that Opponent’s Trade Marks be removed from the Register after one month from the date of this decision. In the event of an appeal from this decision, the trade marks will not be removed from the Register until the appeal has been discontinued or dismissed, or in the event of a decision from the court, the registration will be subject to that decision.

Costs

55.     Both parties requested an award of costs in their favour. As the successful party, the Applicant is entitled to its costs and I accordingly award costs against the Opponent under s 221 in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995, with costs for the second of the two oppositions to be assessed as set out in the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad.[18]

[18] (2001) 53 IPR 591.

Robert Wilson
Hearing Officer
Delegate of the Registrar of Trade Marks
10 December 2020