Pacific Incubator of Intellectual Property Ltd v Wentworth Annexe Ltd

[2016] ATMO 58

TRADE MARKS ACT 1995

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

Re:Opposition by Pacific Incubator of Intellectual Property Ltd to registration of trade mark application 1593732(35) – INCUBATE & DEVICE - filed in the name of Wentworth Annexe Ltd.

Delegate:

Jock McDonagh

Representation:

Opponent: No appearances, no submissions

Applicant: Liam Byrne of Counsel, instructed by Kemp Strang Lawyers

Decision:

2016 ATMO 58

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 44, 59, 60 and 62A considered – none established – trade mark to proceed to registration

Background

1. This is an opposition brought by Pacific Incubator of Intellectual Property Ltd (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘the Act’) to registration of the trade mark subject of the application detailed below in the name of Wentworth Annexe Ltd (‘the Applicant’):

Application Number:	1593732
Priority Date:	2 December 2013
Services:	Class 35: Business development services; business development of inventions; Business planning consultancy; Advisory services relating to business planning; Consultancy relating to the establishment and running of businesses; Intermediary business services relating to the commercialisation of goods (‘the Applicant’s Services’)
Trade Mark:	(‘the Trade Mark’)

1. Following the advertisement in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration on 24 April 2014, the Opponent filed a Notice of Intention to Oppose on 20 June 2014.  The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 18 July 2014. The Applicant filed a Notice of Intention to Defend on 22 August 2014. The SGP raised grounds of opposition under sections 42(b), 44, 59, 60 and 62A of the Act, and sought an award of costs.

Evidence

1. The Opponent filed Evidence in Support of its opposition (‘EIS’) on 27 November 2014.  This evidence consists of a declaration made on 26 November 2014 by Klaudiusz Zbyniew Drulik, Managing Director of the Opponent, with Exhibits 1 to 25 (‘Drulik Declaration’).

2. The Applicant filed Evidence in Answer (‘EIA’) on 14 April 2015.  This evidence consists of a declaration made on 14 April 2015 by James Alexander, the Program Manager of the ‘Incubate Program’ operated by the Applicant, with Annexures JA‑1 to JA‑19 (‘Alexander Declaration’), a declaration made on 14 April 2015 by Joanna Morrison, Project Manager of the Incubate Program, with Annexures JM-1 to JM-25 (‘Morrison Declaration’)  and a declaration made on 14 April 2015 by Andrew Woodward, secretary of th Sydney University Union and of the Applicant, with Annexures AW-1 and AW-2 (‘Woodward Declaration’).

3. No further evidence was filed in respect of this opposition.

4. I heard the matter in Canberra on 29 April 2016 as a delegate of the Registrar of Trade Marks. Liam Byrne of Counsel, instructed by Kemp Strang Lawyers, represented the Applicant by telephone. The Opponent was represented by Davies Collison Cave, patent and trade mark attorneys, who advised by letter dated 15 April 2016 that the Opponent would not be represented at the hearing or filing any written submissions.

5. As a delegate of the Registrar of Trade Marks I am to decide the opposition as required by section 55 of the Act which provides that, unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   The Opponent

6. The Opponent is a group training organisation based in Sydney. It works to place young adults into tertiary placements through traineeships and apprenticeships in ‘creative industries’ across film, music, fashion, marketing, design, gaming and software.

7. The Opponent was the owner of two trade marks, 1268395 SYDNEY INCUBATOR and 1268409 INCUBATOR (‘the Opponent’s Trade Marks’). Both had priority dates of 22 October 2008, and both were registered for Class 35 services, namely event management services (organization of exhibitions or trade fairs for commercial or advertising purposes); organising of trade shows. However, both of these registrations were removed from the register for non-use on 10 November 2015.

8. The Drulik Declaration contains the following evidence:

   ·     The Opponent launched its INCUBATOR services in September 2010.  The Opponent’s Trade Mark has been used in various publications and websites during the period 2010 to 2012.

   ·     The annexures to the Drulik Declaration contain examples of the use of its trade marks at events, promotions, publications and in advertisements. Again, this is limited to the period 2010 to 2012.

   The Applicant

9. The Applicant operates the ‘Incubate Program’ in conjunction with the University of Sydney Union. The Program aims to provide a start up accelerator and entrepreneur program for students, staff and alumni of the University of Sydney and associated universities. The Program provides a broad range of business advisory, consultancy, assistance, marketing and promotional services to student and alumni entrepreneur groups who have been accepted as Program participants as well as providing funding and free work space for them.

   Grounds of Opposition, Onus and Standard of Proof

10. As indicated above, in the SGP the Opponent nominated grounds of opposition under sections 42(b), 44, 59, 60 and 62A of the Act. To successfully oppose the application the Opponent needs to establish at least one of those grounds.

11. The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  The date at which the rights of the parties are to be determined is 2 December 2013, being the filing date of the application (‘the Priority Date’).[3]

    [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32]

    [2] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd[ 2015] FCAFC 156, [133].

    [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595

    Discussion

    Section 44

12. Some relevant provisions of the Act with respect to the ground pursuant to section 44 are reproduced below:

    Section 44 - Identical etc. trade marks

    (1)…

    (2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services  (applicant's services) must be rejected if:

    (a)it is substantially identical with, or deceptively similar to:

    (i)             a trade mark registered by another person in respect of similar services or closely related goods; or

    (ii)            a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

    (b)the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

    Note 1: For deceptively similar see section 10.

    Note 2: For similar services see subsection 14(2).

    Note 3: For priority date see section 12.

    Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

    (3)If the Registrar in either case is satisfied:

    (a)that there has been honest concurrent use of the 2 trade marks; or

    (b)that, because of other circumstances, it is proper to do so;

    the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

    Note:  For limitations see section 6.

    (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

    (a)beginning before the priority date for the registration of the other trade mark in respect of:

    (i)             the similar goods or closely related services; or

    (ii)            the similar services or closely related goods; and

    (b)ending on the priority date for the registration of the applicant's trade mark;

    the Registrar may not reject the application because of the existence of the other trade mark.

    Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

    Note 2: For predecessor in title see section 6.

    Note 3: For priority date see section 12.

    Section 10 - Definition of deceptively similar

    For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

13. To successfully oppose the application pursuant to section 44 of the Act the Opponent must establish the requirements of section 44(2), i.e. that the Opponent’s Trade Mark:

    ·     has a priority date which is earlier than the Priority Date (‘the first requirement’);

    ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

    ·     is in respect of similar services, or goods which are closely related to the Applicant’s Services (‘the third requirement’).

14. The Opponent has particularised the ground of opposition in the SGP as follows:

    The Trade Mark is substantially identical with or deceptively similar to the following trade marks which have an earlier priority date and which are registered or seek registration for similar goods/services and/or closely related goods/services covered by the Application and, therefore, registration of the Application would be contrary to Section 44 of the Act and/or Regulation 4.15 of the Regulations. The Trade Mark has not been used by the Applicant to satisfy the requirements of Sectionb 44(3) and/or 44(4) and/or 4.15A(3) and/or 4.15A(5) (The Opponent’s Trade Marks were cited).

15. As at the Priority Date, the Opponent’s Trade Marks each had a priority date which is earlier than the priority date, thus ostensibly satisfying the first requirement. However, as section 44 is expressed in the present tense, the decision relating to the first requirement should be made on the state of the register at the time of the opposition hearing.[4] The removed registrations ceased to be any impediment to the Applicant’s application from 10 November 2015.

    [4] Roll International Corp v Teleflore (Aust) Inc (1997) 40 IPR 318; Takata Corp v Britax Child-Care Products Pty Ltd (1999) 44 IPR 425

16. There is no need for me to consider the second or third requirements. I find that the Opponent has failed to establish the ground of opposition under section 44.

    Section 60

17. Section 60 of the Act is reproduced below:

    Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

    The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

    (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

    (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

18. To establish a ground of opposition under section 60 an opponent must demonstrate that as at the Priority Date there was another trade mark which had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion.

19. The Opponent has not adduced any evidence capable of supporting such a reputation in respect of the Applicant’s specified services. The only evidence in that regard is a single reference in paragraph [17] of the Drulik Declaration, which states:

    [I]n 2010, STW Group partnered with PIIP in relation to the provision of a variety of services under the INCUBATOR trade mark including business development services, business development of inventions, business planning consultancy, advisory services related to business planning, consulting relating to the establishment and running of businesses and intermediary business services relating to the commercialisation of goods.

20. The only evidence in support of the above statement is a single email at Exhibit 6 of the Drulik Declaration. However, the email does not establish any activity by the Opponent in relation to the alleged business operation, nor that the Opponent’s Trade Marks had developed any reputation in the relevant market.

21. I am not satisfied that because of the reputation of the Opponent’s Trade Mark, the use of the Trade Mark would be likely to deceive or cause confusion. I find that the Opponent has failed to establish the ground of opposition pursuant to section 60 of the Act.

    Section 42

22. Section 42 of the Act is reproduced below:

    42 Trade mark scandalous or its use contrary to law

    An application for the registration of a trade mark must be rejected if:

    (a) the trade mark contains or consists of scandalous matter; or

    (b) its use would be contrary to law.

23. The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[5]  The relevant time for assessing whether an application is contrary to law is at the priority date but ‘looking forward to prospective conduct after registration’.[6]

    [5] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

    [6] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd; 59 IPR 343, 353.

24. The ground of opposition pursuant to section 42 of the Act was particularised in the SGP as follows:

    Based on the Opponent’s reputation in the identified marks in Australia, as consumers are likely to be misled or deceived into believing that the services offered under or by reference to the applied for trade mark are those of the Opponent or somehow associated or affiliated with the Opponent in breach of section 18 of the Australian Consumer Law (2010) (Cth).

    Offering the services for which registration is sought under or by reference to the applied for trade mark also suggests that the Trade Mark Applicant and its services are associated or affiliated with the Opponent or that the Applicant has obtained the Opponent’s sponsorship or approval to use the applied for trade mark, when this is not the case. This conduct is in breach of section 29 of the Australian Consumer Law (2010) (Cth).

    Due to the Opponent’s reputation under its trade marks, there is a risk that any use by the Applicant of the applied for trade mark in relation to any services would be likely to mislead the general public and thereby, cause damage to the Opponent’s reputation and goodwill under its trade marks and amount to Passing Off at common law.

    Therefore, use of [sic] the Applicant for the applied for trade mark in relation to the applied for services is contrary to law and contrary to section 42(b) of the Act.

25. As previously stated, the Opponent has failed to establish a ground of opposition under section 60 of the Act. The test for misleading or deceptive conduct under section 18 of the Australian Consumer Law (‘ACL’) is a more stringent one than that for deception or confusion under s 60,[7] and I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.

    [7] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198.

26. In the absence of any evidence capable of supporting the section 29 of the ACL particular, or any submissions as to how the Opponent says the breach of section 29 would arise, I do not consider that there has been a breach of section 29 of the ACL.

27. Where a trade mark does not contravene section 18 of the ACL, neither will it result in a finding of passing off. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between section 52 of the Trade Practices Act (1974) (Cth) and passing off.  His Honour considered that:

    The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[8]

    [8] [1989] FCA 506, [40] (citations omitted).

28. For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under section 42(b).

    Section 59

29. Section 59 of the Act provides:

    59Applicant not intending to use trade mark

    The registration of a trade mark may be opposed on the ground that the applicant does not intend:

    (a)to use, or authorise the use of, the trade mark in Australia; or

    (b)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 specified in the application.

30. The Opponent must establish that, as at the priority date, the Applicant did not intend to use or authorize the use of the Trade Mark in Australia. That intention need not be an intention to use the mark ‘immediately or within any limited time’.[9] The act of filing an application is prima facie evidence of an intention to use a mark.[10] In Intel Corporation v Magnatex International Pty Ltd[11], Hearing Officer Homann said:

    It is not appropriate in opposition proceedings for the Registrar to instigate an investigation in detail of the use or intention to use in respect of each and every item which might be covered in the applicant's specification and the lodgement of the application and the applicant's statement of use or intention to use must on the principles explained in Aston v Harlee be accepted as prima facie evidence of the relevant use or intention to use. The onus must be on the opponent to lead evidence showing a lack of intention or incapacity to use the mark for the relevant goods.

    [9] Ritz Hotel Ltd v Charles of Ritz Ltd (1988) 15 NSWLR 158 at 203.

    [10] Kimberly-Clark Worldwide Inc v Goulimis (2008) 78 IPR 612 at [10].

    [11] (1998) 41 IPR 406, at 412.

31. The Opponent has not provided any evidence that bears upon the Applicant’s intentions, or is capable of raising an inference that the Applicant does not hold the requisite intention. On the other hand, the Applicant’s evidence goes into substantial detail as to its plans to use the Trade Mark.

32. The Opponent has failed to establish the ground of opposition under section 59.

    Section 62A

    35. Section 62A of the Act provides:

    Application made in bad faith

    The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

    36.   Bad faith was judicially considered in Fry Consulting Pty Ltd v Sports Warehouse (No 2) wherein Dodds-Streeton J stated:

    Bad faith, in the context of s 62A, does not, in my opinion, require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.

    The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

    Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character…

    The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.[12]

    37.   This approach was endorsed by Bennett J in DC Comics v Cheqout Pty Ltd.[13]

    38.   The Opponent has not provided any cogent evidence that the Applicant or any of its officers were even aware of the existence of the Opponent, its use of the Opponent’s Trade Marks or its conduct of services similar to those specified in the Applicant’s application, or any services at all, when they decided to make the Application. Furthermore, if the Applicant was aware of the Opponent’s Trade Marks at the time of filing the application, this (without more) does not signify the application was made in bad faith.

    39.   I am not persuaded that the Opponent has discharged the onus of establishing that the Applicant, as at the priority date, applied for the Trade Mark in bad faith, in the sense that in all the circumstances, persons adopting proper standards would regard the decision to apply to register the Trade Mark as being in bad faith, or that reasonable and experienced persons in the field would view such conduct as falling short of acceptable commercial behaviour.

    [12] [2012] FCA 81 [164].

    [13] [2013] FCA 478.

1. Accordingly I find that the section 62A ground of opposition has not been established.

   Decision

2. The Opponent has failed to establish any of the grounds of opposition.  Trade Mark application no. 1593732 may proceed to registration not less than one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

   Costs

3. In the event that the Applicant prevailed, Mr Byrne sought an award of costs in the Applicant’s favour. As the successful party, the Applicant is entitled to its costs and I accordingly award costs against the Opponent in accordance with Schedule 8 of the Trade Marks Regulations 1995.

   Jock McDonagh

   Hearings Officer

   Trade Marks Hearings

   29 July 2016