Re/Max, LLC v Resimax IP Pty Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by RE/MAX, LLC to registration of trade mark application number 1998948 (classes 35, 37, 42) – RESIMAX GROUP (stylised) - in the name of Resimax IP Pty Ltd.

Delegate:

Debrett Lyons

Representation:

Opponent: Andrew Fox SC and S.J. Hallahan of counsel, instructed by Chrysiliou IP.

Applicant: Mr Peter Wallis K.C. and Andrew Sykes of counsel, instructed by Hope & Co., Lawyers

Decision:

2023 ATMO 15

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 42(b), 44, 58, 59, 60 and 62A – s 58 established –registration refused.

Background

This decision is in respect of an opposition by RE/MAX, LLC (Opponent) under s 52 of the Trade Marks Act 1995 (Cth) (Act) to the registration of the trade mark detailed below, filed by Resimax IP Pty Ltd (Applicant).
Trade Mark:
App. No.:  1998948
Filing Date:  28 March 2019
Services:Class 35: Marketing of homes and residential developments including by way of display homes; the provision of the above services by way of the global communications network
Class 37: Building construction services; building construction supervision services; dwelling construction; construction information services; construction advisory services; building project management, including the building and project management of homes and residential developments; installation of home fittings; repair and maintenance services for buildings; the contracting and sub-contracting of building services; the provision of information in respect of the preceding services including information provided by way of the global communication network
Class 42: Design services namely the design of homes, display villages and residential developments; architectural services; preparation and drawing up of house, property development and/or building plans; all the foregoing provided personally or by way of the global communications network
(Services).
The application to register the Trade Mark was examined as required by s 31 of the Act and its acceptance for possible registration was advertised.
The Opponent filed a Notice of Intention to Oppose registration and a Statement of Grounds and Particulars (SGP). The Applicant filed a notice of intention to defend the application from opposition. The parties then filed their evidence (set out below) in accordance with reg 5.14 of the Trade Marks Regulations 1995 (Cth), after which they requested a hearing.
I heard the matter, as a delegate of the Registrar of Trade Marks, on 2 December 2022. Andrew Fox SC, of counsel, instructed by Chrysiliou IP, made oral and written submissions on behalf of the Opponent. Andrew Sykes of counsel, instructed by Hope & Co., Lawyers, represented the Applicant and did likewise.
Evidence
The evidence filed in this matter comprises declarations by the following persons:
Evidence in support
·Declaration of Shawna Gilbert made on 14 October 2020; and
·Declaration of Reynier Van Der Westhuizen made on 9 October 2020.
Evidence in answer
·Aziz Kheir made on 15 January 2021 (Kheir Declaration).
Evidence in reply
·Declaration of Reynier Van Der Westhuizen made on 19 March 2021 (Van Der Westhuizen 2); and
·Declaration of Reynier Van Der Westhuizen made on 16 May 2022.
Grounds, Onus and Relevant Date
The grounds of opposition particularised in the SGP are those under ss 42, 44, 58, 59, 60, 62 and 62A of the Act. The Opponent bears the onus of establishing a ground of opposition[1] and the standard of proof is the ordinary civil standard of the balance of probabilities.[2] At the hearing the s 62 ground was not pursued and I treat it as abandoned. The date at which the rights of the parties are determined is the filing date of the application,[3] being 28 March 2019 (Relevant Date).
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[2] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Kitto J).
Section 58
Section 58 of the Act states that:
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Section 27(1) provides:
A person may apply for the registration of a trade mark in respect of goods and/or services if:
(a) the person claims to be the owner of the trade mark; and
(b) one of the following applies:
(i) the person is using or intends to use the trade mark in relation to the goods and/or services;
(ii) the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;
(iii) the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.
The Opponent’s submission is that the Applicant is not the owner of the Trade Mark and that this is a fatal, incurable fault in the application. It submits that, before the Applicant company was incorporated on 18 July 2017, a trade mark substantially identical to the Trade Mark was used for the same Services by another company, Resimax Group Holdings Pty Ltd (ACN 143 064 386) (formerly, Resimax Group Pty Ltd) (RGH).
The Applicant’s retort is that the Opponent’s premise that a first user of a trade mark will always be its owner is not true and is not true here. It submits that the sole director of the Applicant and of RGH incorporated the Applicant with the intention that it should become the owner of intellectual property rights. It submits that there was a single controlling mind whose deliberate intention was that RGH abandon ownership and that the Applicant assume ownership with the intention of authorising use by group members.
Before examining those arguments it is convenient to make some preliminary observations and findings. The declarations described above in part rely on evidence led and admissions made in Federal Court proceedings between the parties[4]. I have no difficulty with that and it makes certain findings easier. What emerges from the evidence is that from sometime in 2010 onwards, the trade mark shown below came into use[5].
(RESIMAX GROUP trade mark)
[4] Federal Court of Australia Proceeding No. NSD 122/2018.
[5] Kheir Declaration at [11].
The evidence shows that before the Relevant Date, four companies (one being the Applicant) were in existence and used “Resimax” in their names, but it was only RGH which had used the RESIMAX GROUP trade mark.
Insofar as s 58 requires the substantial identity of trade marks, case law directs a side-by-side comparison (as below) and when that takes account of “essential features” or “dominant cognitive cues” I am in agreement with the Opponent’s submission that the marks are substantially identical.

I note, too, that the Trade Mark was used on the RGH website before the Relevant Date[6] (although not before the incorporation of the Applicant) and that the Applicant in its written submissions concedes that the RESIMAX GROUP trade mark is substantially identical to the Trade Mark.
[6] Kheir Declaration at [2]-[3].
The Applicant also concedes that their use relates to “overlapping services”. The concession is inconclusive since it is established that since s 58 requires use in respect of “the same kind of thing”. Moreover, the statement is ambiguous because although made in the context of the s 58 discussion, it is possible that the Applicant is referring to overlap of the Services with the Opponent’s services. What is relevant of course to the Opponent’s argument is use by RGH.
Although not addressed in submission by either side, the question is whether the Services are essentially co-extensive with what was provided by RGH before the Relevant Date and I find that they are so. Very clearly RGH used the RESIMAX GROUP trade mark in relation to property development services, broadly. The evidence also shows a real estate service “for residential project marketing, property sales and rentals … connecting buyers, landlords and tenants with the right property solutions.”[7]
[7] Kheir Declaration, [8] and Annexure AK-8.
Finally, I note that there was no formal or informal assignment of the RESIMAX GROUP trade mark or the Trade Mark from RGH or any other person or entity before the Relevant Date.
What is left to consider is the case law and how it applies to the present facts. In Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, at [55], (Food Channel) the Full Federal Court said that:
Section 58 of the Act provides that registration of a trademark may be opposed on the ground that the applicant is not the owner of the mark. In this context, the term ‘owner’ derives meaning from its common law origins relating to prior use. As explained in Shanahan’s Australian Law of Trade Marks And Passing Off (4th Ed) (at 380):
The first user is the person entitled to claim to be the owner and if the applicant is shown not to be the first user, the ground of opposition will be established.
In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (2017) 141 IPR 1, a Mr Pham was the applicant for a trade mark but it was a company of which he was a director that had used the trade mark. Mr Pham assigned the trade mark application to the company after it had been filed. Insofar as ss 58 and 59 (no intention to use a trade mark) were at issue, the Full Court said that:
[32] Once it is understood that the legislative scheme operates in the context of established principle that the alternative sources of ownership of a trade mark are authorship and use before filing an application for registration or the combination of authorship, filing of an application for registration and an intention to use or authorise use, the relationship between s 27 and ss 58 and 59 of the 1995 Act becomes apparent. The grounds of opposition in ss 58 and 59 reflect the requirements of s 27. Only a person claiming to be an owner may apply for registration. That claim may be justified at the time the application is made based on either alternative source of ownership. But if the claim is not justified at that time, ss 58 and/or 59 are available grounds of opposition. Moreover, if the applicant is not the owner of the mark at the time of the filing of the application, the assignment provisions in ss 106 – 111 do not assist because they authorise the assignment of the mark and thus pre-suppose, consistent with established principle, that the applicant owns the mark.
I understand the Applicant’s submission that behind both the Applicant and RGH was a single controlling mind in the form of Mr Kheir.[8] I understand that submission in the context of, for example, the comment in Food Channel at [61] that
The courts should be cautious to allow the legal fiction of the corporate veil to defeat registration in a case where one of a group of companies, all controlled by the same directing mind and will, used the mark prior to the other.
[8] Van Der Westhuizen 2, Annexure RW-16.
Where I have difficulty is with the submission that it was Mr Kheir’s deliberate intention that RGH abandon ownership of the RESIMAX GROUP trade mark/Trade Mark and that the Applicant assume ownership and apply for registration in its name with the intention of authorising use by group members.
The Applicant, rightly, states that ownership can be lost by, for example, estoppel, acquiescence or abandonment. Again, the Applicant rightly points to the possibility of abandonment through the positive act of one company ceasing use of a trade mark, allowing the way for another company to assume use.[9] The evidence that this might mirror what occurred in this case is essentially limited to what the Applicant labels the “Assumption of Rights statement”, being Mr Kheir’s sworn, but otherwise unsupported, statement that “[i]n July 2017, the Applicant was incorporated to be the registered owner of the Group’s intellectual property rights.”[10]
[9] Citing Nguyen v Aardwolf Australia Pty Ltd [2017] ATMO 63.
[10] Kheir Declaration [4].
That statement is likely true – the Applicant is, after all, Resimax IP Pty Ltd – but says nothing of the asserted intention of abandonment as a pre-condition, something which is unrecorded in the Assumption of Rights statement, or elsewhere it seems, and which in my assessment and given the value of the asset, seems both counter-intuitive and (as these proceedings show) open to misunderstanding and contest when an assignment deed was an option. All that is offered in submissions is that “the fact that Mr Kheir would sign such a deed as both the signatory for the assignee and assignor betrays the pointless nature of such a document to prove an obvious fact.”
The evidence shows that RGH used a trade mark substantially identical to the Trade Mark before the Applicant came into existence. There is no evidence of transfer of rights from RGH to the Applicant before the Relevant Date and I do not find sufficient evidence of an unrecorded scheme whereby RGH abandoned the Trade Mark in favour of the Applicant.
It follows that, at the Relevant Date, the Applicant was not the owner of the Trade Mark and so the s 58 ground of opposition is established.
The remaining grounds do not require consideration.
Decision and costs
Section 55 of the Act relevantly provides:
55Decision
(1)Unless subsection (3) applies to the proceedings, 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.
Note:For limitations see section 6.
I refuse to register trade mark application 1998948. If the Registrar is served with a notice of appeal from that decision, I direct that the disposition of the application be in accordance with the court’s orders.
The usual rule is that costs follow the event. The Opponent has been successful and I order costs against the Applicant.
Debrett Lyons
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
10 February 2023

[2023] ATMO 15

10 February 2023