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)

Case [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…

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AGLC
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
Case
[2020] ATMO 89
Decision Date

CaseChat Overview and Summary

This matter concerned an application by Fivepals, Inc. (the Removal Applicant) to remove trade mark number 786298 from the Register under section 92 of the *Trade Marks Act 1995* (Cth) (the Act), on the grounds of non-use. Alice Corporation Pty. Ltd. (the Removal Opponent) opposed this application. The decision was made by Mary-Ann Cooper, a Hearing Officer acting as a delegate of the Registrar.

The primary legal issue before the Hearing Officer was whether the Removal Opponent had demonstrated that it had used the trade mark in Australia in good faith, or that there was a relevant obstacle to its use, during the three-year period preceding the filing of the removal application. The onus was on the Removal Opponent to rebut the allegation of non-use on the balance of probabilities.

The Hearing Officer found that the Removal Opponent had failed to discharge its onus. While the Removal Opponent claimed its resources had been expended on patent litigation in the US and that it had inadvertently failed to renew its Australian trade mark, it provided no evidence of actual use of the trade mark in Australia during the relevant period. The evidence indicated that the Removal Opponent was unknown at its registered address and had moved its principal place of business to its accountants' office, with a stated lack of current interest in a public persona. Consequently, the ground for removal was established.

The Hearing Officer ordered that the trade mark be removed from the Register in respect of all goods and services for which it was registered, with a stay of one month to allow for any appeal. Costs were awarded to the Removal Applicant.

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

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 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 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 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. 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

Decision

Reasons for decision

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 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. 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. 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 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 CooperHearing OfficerOppositions and HearingsTrade Marks and Designs27 May 2020

Ratio Decidendi

Legal Principle Established

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 AnswerØ Declaration of Lynell Tuffery Huria, Principal with AJ Park, dated 20 September 2018 (‘Huria Declaration’). · Evidence in ReplyØ Declaration of Ian K Shepherd dated 25 January 2019 (‘second Shepherd Declaration’). 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. As a delegate of the Registrar, I have proceeded to decide the matter on the filed material.Evidence in Support 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 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