Ozsale Pty Limited v Michael Farlam

[2024] ATMO 29

TRADE MARKS ACT 1995

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

Re:Opposition by Ozsale Pty Limited to an application under section 92 of the Trade Marks Act 1995 (Cth) by Michael Farlam for removal of trade mark number 1381529 (35) – ozsale.com.au (Figurative) – in the name of Ozsale Pty Limited

Delegate:	Debrett Lyons
Representation:	Opponent: K&L Gates Applicant: AU TM Pty Ltd
Decision:	2024 ATMO 29 Trade Marks Act 1995 (Cth) - section 96 opposition: ss 92(4)(a) and (b) application for removal – Opponent’s evidence shows no use of the Trade Mark during the relevant period – discretion not exercised – Trade Mark to be removed from the Register

Background

1. Unless otherwise indicated, references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth), respectively.

2. This decision is pursuant to an application made on 17 February 2022 under ss 92(4)(a) and 92(4)(b) by Michael Farlam (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks (‘Removal Application’).  The Removal Application is made in respect of all the services for which the trade mark is registered.

Registration No.	1381529
Lodgement (filing) date	3 September 2010
Services	Class 35: Online advertising and promotion of goods and services; retail services; retailing of goods and services via the internet; promotion and retailing of goods and services via communication media including hand held devices (‘Registered Services’)
Owner	Ozsale Pty Limited
Trade Mark	(‘Trade Mark’)

1. The owner of the Trade Mark, Ozsale Pty Limited (‘Opponent’), has opposed the Removal Application, filing a Notice of Intention to Oppose removal on 23 February 2022 and a Statement of Grounds and Particulars (‘SGP’) on 22 March 2022.  The Applicant filed a Notice of Intention to Defend on 16 May 2022.

2. The following evidence was filed:

Declarant	Date
Evidence in Support
Jimmy Gill (Gill Declaration 1)	19 August 2022
Evidence in Answer
Michael Farlam (Farlam Declaration)	23 November 2022
Evidence in Reply
Jimmy Gill (Gill Declaration 2)	2 February 2023

1. After this evidence was filed the parties were given an opportunity to request either an oral hearing or a hearing by written submissions.  The parties asked to be heard by submissions and a letter was sent advising them that the matter was set down for a notional hearing date of 1 February 2024.  That letter stated that the Opponent was to file written submissions by 18 January 2024 and the Applicant by 25 January 2024.  Submissions from the Opponent were received in a timely manner.  The Applicant did not file submissions.

2. I am a delegate of the Registrar and the matter has been allocated to me to decide, which I have done on the basis of the Removal Application; the Notice of Intention to Oppose and SGP; the evidence, and the Opponent’s submissions. 

   The Relevant Provisions

3. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 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)  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.

   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.

4. 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 for registration,[1] as is the case here.  The relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 17 January 2022, that is, 17 January 2019 to 17 January 2022 (‘Relevant Period’).

   [1] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1 pt 3 as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.

5. The onus of rebutting the allegation of non-use lies with the Opponent and is particularised in s 100 which provides, relevantly to this matter:

   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) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

   (a) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or
    (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

   (i)  the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
   (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

   (c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

6. I proceed on the accepted basis that the standard of proof is the ordinary civil standard being the balance of probabilities.[2]  In accordance with s 101, I may decide to remove the Trade Mark from the Register for all or some of the Registered Services, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the Removal Application was made are established.

   [2] Pfizer Products Inc v Karam [2006] FCA 1663 (Gyles J) and more recently: 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.

   General Principles of Law

7. A single instance of bona fide use of the Trade Mark in the course of trade during the Relevant Period may be sufficient to rebut the allegation under s 92(4)(b),[3] but if a single act is relied upon then it must be ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[4]  Use of the Trade Mark by an authorised user is taken to be use of the Trade Mark by the Opponent.[5]  Finally, I may take account of use of a trade mark with alterations or additions not substantially affecting the identity of the Trade Mark in determining whether or not there has been qualifying use.

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

   [4] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

   [5] s 7(3).

8. Recently, in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, the High Court noted the following:

   Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark.

   Whether a sign has been "use[d] as a trade mark" is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not "as a trade mark" was in Irving's Yeast-Vite Ltd v Horsenail, where the phrase "Yeast tablets a substitute for 'Yeast-Vite'" was held to be merely descriptive and not a use of "Yeast-Vite" as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.

   The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.[6]

   [6] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).

   Discussion

9. I have said nothing so far of s 92(4)(a). Sections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal but a subtlety of the Act is that once a trade mark has been registered for five[7] years, paragraph (a) is considered to merge with paragraph (b).[8] Accordingly, in this case I need only consider s 92(4)(b) and so to successfully oppose the Removal Application the Opponent must establish that it has used the Trade Mark during the Relevant Period, or prove circumstances that were an obstacle to use during that time.[9]  If the Opponent fails to establish use or an obstacle to use, I still have residual discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register for all or some of the Registered Services.

   [7] Or three years for trade marks filed from 24 February 2019 onwards see changes made in the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1, pt 3.

   [8] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off 6th edition, 2016 Thomson Reuters, [70.510].

   [9] s 100(3)(c).

   Use of the Trade Mark in the relevant period

10. Aside from misstating the Relevant Period, the SGP essentially mimics the legislation and asserts genuine use of the Trade Mark, or marks nearly resembling it, in respect of the Registered Services. The Farlam Declaration is essentially submissions and contains no evidence. It asserts that the Opponent has not used the Trade Mark since November 2011 and that the Opponent has no intention of using the Trade Mark in the future. The Opponent’s evidence consists of Gill Declaration 1 and 2. It is not first-hand evidence from the Opponent but is from the Opponent’s legal representative who states that “[t]he information contained in this Declaration is derived from the information provided to me by Ozsale, and from searches I have caused to be undertaken in respect of Ozsale and its business”. Of relevance to s 92(4)(b) are the statements that the Opponent has operated a website at (‘Opponent’s website’) between the years 2007 and 2022 which the Wayback Machine shows to have displayed the “Trade Mark, and various iterations of the … Trade Mark which do not substantially affect its identity, in connection with the range of services covered by the … Trade Mark”.  Historical website pages are exhibited.  Gill Declaration 1 also exhibits various social media pages connected with the Opponent.

11. The Applicant’s claim that the Trade Mark has not been used since 2011 broadly corresponds with the time the Wayback Machine archives show a transition from first use of the Trade Mark on the Opponent’s website in 2007 to use of another mark, shown below, in 2011 (‘Variation 1’).

12. Use of this mark on the Opponent’s website continues through to 2020.  There then occurs another transition to use of the mark shown below (‘Variation 2’).

13. That said, in response to the criticisms raised in the Farlam Declaration that it is not the Trade Mark which has been used throughout, Gill Declaration 2 puts forward further evidence from the Wayback Machine that the “About Us” page of the Opponent’s website has shown the Trade Mark in the date range May 2007 to August 2022.

14. Taking the evidence as a whole I find, firstly, that the Opponent’s website consistently describes the Opponent’s business as “the number 1 members-only online shopping club in Australia and your doorway to affordable designer fashion” and it is plain to me from the evidence that the Trade Mark, Variation 1 and Variation 2 have been used in that manner and in respect of all of the Registered Services. 

15. Secondly, Gill Declaration 1 does not show use of the Trade Mark in the Relevant Period. 

16. Thirdly, applying the case law, neither Variation 1 nor Variation 2 are marks with additions or alterations that do not substantially affect the identity of the Trade Mark.  Justice Windeyer set out the test for determining whether marks are substantially identical in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd as follows:

    In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[10]

    [10] [1963] HCA 66, [12].

17. The Full Federal Court also noted in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd that:

    [I]t is unlikely that the essential elements of a mark or its dominant cognitive clues [sic] are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark.[11]     

    [11] [2017] FCAFC 83, [52] (Greenwood, Jagot and Beach JJ).

18. Section 100(3)(a) was considered again recently by the Full Federal Court which only last week delivered its decision in RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd.  The court said: 

    [84] The appellants submit that whilst two trade marks that are substantially identical will satisfy the test under s 100(3)(a), the proper question is not one of side-by-side comparison between marks, but rather whether the mark “will still have the identity in its relationship with consumers in its capacity to convey to consumers the information that the registration conveys”. Despite the care with which this submission was put, we do not accept it to be correct.

    [85] It is apparent from the authorities to which we have referred that the statutory test must be applied in terms, namely by asking whether the opponent (here, the trade mark owner) has established that the trade mark or the trade mark with additions or alternations not substantially affecting its identity was used (in good faith). In considering whether such additions or alterations have been made, the identity of the mark must first be considered and whether that identity has been “substantially affected”. An addition or alternation not substantially affecting its identity will be a permissible deviation from the registered mark. Consideration of that question cannot realistically take place without a review of the features and characteristics of the two marks and a comparison between them. Whether or not the test is satisfied will in most cases be determined by considering whether a total impression of similarity emerges from a comparison between the two marks. Whether or not there exists a penumbra of cases where a mark that is not substantially identical (within established principles) nonetheless falls within s 100(3)(a) does not arise in the present case.[12] 

    [12] [2024] FCAFC 10(Nicholas, Burley and Hespe JJ).

19. It would be wrong to treat “oz sale” as the dominant cognitive cue of the Trade Mark.  Those terms are wholly descriptive and the identity of Trade Mark resides in the whole, albeit that if deconstructed, the Trade Mark includes other non-distinctive elements.

20. What emerges from these findings is that Exhibit JG13 to the Gill Declaration 2 becomes the critical evidence.  As described above, Gill Declaration 2 puts forward this screenshot from the Wayback Machine as evidence of use of the Trade Mark well into the Relevant Period.  I can not agree.  My understanding of this exhibit is that it is a capture of a single instance of the Trade Mark in use on the “About Us” page of the Opponent’s website at 23 February 2011.  The fact that the screenshot carries a date range of May 2007 to August 2022 and refers to 81 captures being available during that period is not assurance that the “About Us” page did not change.   There are no additional captures provided in Gill Declaration 2 to demonstrate use of the Trade Mark during the Relevant Period.  Indeed, captures made between February 2017 and August 2022 below show use of Variation 1 and, as time goes on, Variation 2, consistent with the evidence already described; the Trade Mark is nowhere to be seen.

    18 February 2017

    19 March 2018 

    26 August 2021 

    15 August 2022 

1. In the result, I find no use of the Trade Mark in the Relevant Period.

   Registrar’s Discretion

2. As flagged already, the Act gives the Register a residual discretion to allow a mark which has not been used to remain registered. Section 101(3) provides:

   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.

3. The Opponent bears the onus of satisfying me that it is reasonable to exercise the discretion in its favour.[13]  In Austin, Nichols & Co Inc v Lodestar Anstalt, the purpose of Part 9 of the Act was expressed as follows:

   The purpose of Part 9 is to provide for the removal of unused trade marks from the Register. In that regard it is plainly designed to protect the integrity of the Register, and in this way, the interests of the consumer. At the same time, however, it seeks to accommodate, where reasonable, the interests of the registered trade mark owners.[14]

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

   [14] Ibid [38].

4. Further, in PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Court of the Federal Court summarised the range of factors that have been held to be relevant to the exercise of the discretion:

   The range of factors considered in the exercise of the discretion has included whether or not:

   (a) there has been abandonment of the mark;

   (b) the registered proprietor of the mark still has a residual reputation in the mark;

   (c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;

   (d) the applicant for removal had entered the market in knowledge of the registered mark;

   (e) the registered proprietors were aware of the applicant’s sales under the mark;

   (f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[15]

   [15] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (citations omitted).

5. The exercise of discretion is not one that should be exercised lightly. As stated by Jacob J in Laboratoire De La Mer Trade Marks:

   There is an obvious strong public interest in unused trade marks not being retained on the registers of national trade mark offices. They simply clog up the register and constitute a pointless hazard or obstacle for later traders who are trying actually to trade with the same or similar marks. They are abandoned vessels in the shipping lanes of trade.[16]

   [16] [2002] FSR 51 (Ch) 790, [19(a)].

6. There is no compelling argument from the Opponent and I do not consider it appropriate to exercise my discretion not to remove the Trade Mark from the Register for all of the Registered Services.

   Decision

7. The Opponent has not established its opposition to the Removal Application and so the Trade Mark should be removed from the Register in respect of all the Registered Services.  Accordingly, I direct that registration 1381529 be removed from the Register one month from the date of this decision.  If the Registrar is served with a notice of appeal before then I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.

   Debrett Lyons
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   19 February 2024