Re: Opposition by Alice Corporation Pty. Ltd. to an application under section 92 of the Trade Marks Act 1995 (Cth) by Fivepals, Inc. to remove trade mark number 786298 (9, 35, 36, 42) - Alice Corporation (fancy)

[2020] ATMO 89

TRADE MARKS ACT 1995

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

Re:Opposition by Alice Corporation Pty. Ltd. to an application under section 92 of the Trade Marks Act 1995 (Cth) by Fivepals, Inc. to remove trade mark number 786298 (9, 35, 36, 42) – Alice Corporation (fancy) - in the name of Alice Corporation Pty. Ltd.

Delegate:	M. Cooper
Representation:	Opponent: Self-represented Applicant: AJ Park
Decision:	2020 ATMO 89 Trade Marks Act 1995 (Cth) – s 96 Opposition to application to under s 92(4)(b) – no good faith use or obstacle to use demonstrated in relevant period - Registrar’s discretion under s 101 not exercised - Trade Mark to be removed from the Register.

Background

1. Alice Corporation Pty Ltd (‘Removal Opponent’) is the registered owner of the following trade mark:

Registration	786298
Trade Mark
Filing date	22 February 1999
Goods and Services	Class 9: Computer software in this class including that for financial applications and risk management applications
Class 35: Business management services in this class
Class 36: Financial services including risk management services; insurance services; financial and insurance information services
Class 42: Design and development of computer software; software support services; computer programming services

1. On 25 October 2017, Fivepals, Inc. (‘Removal Applicant’) applied under s 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) to remove the Trade Mark from the Register for non-use in relation to all the goods and services for which it is registered. A Notice of Intention to Oppose the removal application was filed by the Removal Opponent on 2 January 2018. On 31 January 2018 it filed its Statement of Grounds and Particulars (‘SGP’). A Notice of Intention to Defend was filed by the Removal Applicant on 14 March 2018.

   Evidence

2. The evidence filed in relation to this removal opposition comprises:

   ·     Evidence in Support

   Ø  Declaration of Ian K Shepherd, the Removal Opponent’s CEO, dated 13 June 2018 (‘first Shepherd Declaration’).

   ·     Evidence in Answer

   Ø  Declaration of Lynell Tuffery Huria, Principal with AJ Park, dated 20 September 2018 (‘Huria Declaration’).

   ·     Evidence in Reply

   Ø  Declaration of Ian K Shepherd dated 25 January 2019 (‘second Shepherd Declaration’).

3. As neither party requested a hearing, IP Australia wrote to the parties on 26 March 2019 advising that a decision would be made on the written record and provided a period of three months within which submissions could be filed. While neither party filed submissions within the required time, the correspondence forwarded to the Removal Applicant’s representatives was sent to an incorrect address and ‘returned to sender’. On allocation of the matter to me, I observed that the Removal Applicant had advised that it wished to provide written submissions. Consequently, I emailed both parties allowing a further period within which written submissions could be filed. Neither party did so.

4. As a delegate of the Registrar, I have proceeded to decide the matter on the filed material.

   Evidence in Support

5. The first Shepherd declaration claims the Removal Opponent’s circumstances are exceptional insofar as its resources have been fully expended since 2007 dealing with an infringement of its patents in the US courts and ‘in bolstering its portfolio of relevant patent claims’. The litigation concluded in 2014 but Shepherd stated that the Removal Opponent had consequently ‘necessarily’ ‘progressively contracted its operations.’ He said it had also inadvertently failed to renew its Australian ‘Alice’ trademark in 2017[1] but claims that the company is ‘extraordinarily well known internationally’ with ‘thousands’ of articles having been written about its US litigation. Shepherd claims that the stylised version of Alice Corporation (presumably the Trade Mark) continues to be the Company’s ‘principal identifying mark’ and appears prominently on stationary and on the website He acknowledges that he is unable to provide any invoices ‘and the like’ because ‘given the Company’s predicament in recent years, no such documents exist’. He accepts the Removal Applicant’s entitlement to some of the class 9 Goods and claims the Removal Opponent has filed a new trade mark application for ‘Alice’.

   [1] I assume this is trade mark no. 732816 for ‘Alice’ which was removed because the renewal fee was not paid.

   Evidence in Answer

6. The Huria declaration outlines the results of an investigation into the Removal Opponent’s business activities. The results of that search are relevantly summarised as indicating that the Removal Opponent is unknown at the Trade Mark’s registered address and ‘it appears that in the last two years Alice Corporation Pty Ltd has changed its registered office and principal place of business to their accountants’ office’.

   Evidence in Reply

7. Shepherd acknowledges that the Removal Opponent is no longer at the Trade Mark’s registered address and that its telephone number has been reassigned ‘as a result of the company’s activities being principally located in Washington DC over many years’. He further states that ‘the Company has no current interest in having a public persona’ and it makes commercial sense to have its registered office and principal place of business with its accountants. He says it is now ‘actively pursuing establishing a public-private joint venture to commercialization [of] its inventions.’[2]

   [2] Little information is available about the exact nature of the Removal Opponent’s operations. On its website it claims to be ‘an innovator in financial markets’, particularly, it appears, in the global derivatives market.

   Onus

8. In respect of the proceedings under s 92(4)(b), s 100 of the Act provides that the Removal Opponent bears the onus of rebutting the allegation of non-use. The relevant standard of proof is on the balance of probabilities.[3]

   [3] Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 [504].

   Legislation

9. Section 92 of the Act relevantly provides as follows:

   92 Application for removal of trade mark from Register etc.

   (1)  Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be 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.

   (3)  An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register.

   Note:          For prescribed court see section 190.

   (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:

   [...]

   (b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the nonuse 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.

10. If the Removal Opponent establishes its good faith use of the Trade Mark, (or the Trade Mark with additions or alterations not substantially affecting its identity), or that there was a relevant obstacle to its use during the 3 year period ending one month before the removal application date of 25 October 2017 (‘the relevant period’)[4], it is taken to have rebutted the allegation of non-use: s 100(3). A single instance of bona fide use in the relevant period is all that is required[5].

    [4] In this case, the three years ending on 25 September 2017.

    [5] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261 [14-17].

    Consideration

11. There is no evidence of any action concerning the Trade Mark pending in a court (s 92(3)). Based on the available records, the Trade Mark has been registered since 22 February 1999, that is, it has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application was filed (s 92(4)(b)). It is also self-evident that it has been over 5 years since the filing date of the application for registration (s 93(2)).

12. As noted above, the Removal Opponent claims that the stylised version of Alice Corporation continues to be the Company’s ‘principal identifying mark’ and appears prominently on stationary and the website however no evidence of this was provided. An examination of the website shows the Trade Mark currently appears on the first page in the context of the company name only. Pertinently, even if this might be taken to constitute Trade Mark use, it does not demonstrate use in the relevant period. The ‘Media’ section of the website contains various 2013 articles concerning the Removal Opponent’s US patent litigation but does not demonstrate Trade Mark use. Other sections of the website refer only to the ‘Alice Market’ or ‘Alice’.  The Removal Opponent’s website content acknowledges that

    From 2007 to the present time, Alice’s resources have primarily been diverted to the CLS litigation which has meant that the Company’s efforts to commercialize Alice have assumed a secondary role.[6]

    [6] accessed on 15 May 2020.

13. There is no evidence of use of the Trade Mark in Australia, or elsewhere, in the relevant period.

14. In the alternative, in the absence of evidence of Trade Mark use in the relevant period, the Removal Opponent can rebut a non-use allegation by establishing that there was an obstacle to use during the relevant period (s100(3)(c)). While no claim of any obstacle was specifically made, the first Shepherd declaration does suggest that the Removal Opponent’s preoccupation with its patent litigation has caused it to engage in little commercial activity which, presumably, could explain the lack of Trade Mark use. I note however that the litigation to which he refers concluded in June 2014, prior to the relevant period. The Removal Opponent provided no cogent or persuasive evidence of any obstacle to Trade Mark use in the relevant period.

15. For the above reasons I am not satisfied that the Removal Opponent has demonstrated either its good faith use of the Trade Mark (or use with additions or alterations that did not substantially affect its identity) in the relevant period or established that there were circumstances which were an obstacle to its use (s 100(3)(a) and (c)).

16. There is no evidence or claim that the mark was relevantly assigned for the purposes of s 100(3).

17. It follows that I am not satisfied the Opponent has rebutted the Removal Applicant’s allegation of Trade Mark non-use under s 92(4)(b). Therefore, the ground on which the removal application was made has been established: s 101(1).

    Registrar's discretion

18. Even where grounds for removal have been established, s 101(3) of the Act provides that, if the Registrar or the court is ‘satisfied that it is reasonable to do so’, it may decide the trade mark should not be removed from the Register.

19. The applicable principles, as stated by Flick J in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [7] and as adopted in Optical 88 Limited v Optical 88 Pty Limited (No.2)[8], require that ‘the discretion under s 101(3) is not conditioned on the need to establish “exceptional circumstances” before the discretion can be exercised favourably to the trade mark owner’ but that it requires the Court or the Registrar to be ‘positively satisfied’ it is reasonable to do so and ‘it is the opponent for removal who bears the burden of persuasion on that issue’.[9]

    [7] (2008) 77 IPR 69; [2008] FCA 934 [193-213].

    [8] [2010] FCA 1380 [273].

    [9] Ibid.

20. Other than referring to ‘exceptional circumstances’ related to its patents litigation, the Removal Opponent’s declarations did not address the discretion.

21. While acknowledging the broad discretion available under s 101(3), having carefully considered all the material before me, and in the absence of any submissions or relevant evidence from the Removal Opponent in this regard, I am not satisfied in all the circumstances of this matter that it is reasonable to exercise the discretion not to remove the Trade Mark.

22. There is no claim or any evidence of the Opponent’s Trade Mark use on similar goods or closely related services or closely related goods and similar services: s 101(4).

    Decision

23. Section 101 of the Act relevantly provides:

    101 Determination of opposed application--general

    (1) Subject to subsection (3) and to section 102, if:

    (a) the proceedings relating to an opposed application have not been discontinued or dismissed; and

    (b) the Registrar is satisfied that the grounds on which the application was made have been established;

    the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

24. As the Removal Opponent has not rebutted the allegation of non-use, the ground for removal has been established. It follows that the application for removal of the Trade Mark in respect of all the goods and services for which it is registered, has been successful.

25. I direct that the Trade Mark be removed from the Register after one month from the date of this decision. If the Registrar is served with a notice of appeal on or before that time, the registration will not be amended or removed unless the appeal is withdrawn or discontinued. Otherwise, the registration will be subject to the decision of the Court.

    Costs

26. As the Removal Applicant has been successful, I award costs against the Removal Opponent under s 221 of the Act in the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth).

    Mary-Ann Cooper
    Hearing Officer
    Oppositions and Hearings
    Trade Marks and Designs
    27 May 2020