Re: Opposition by Alice Corporation to application pursuant to section 92 of the Trade Marks Act 1995 (Cth) by Fivepals, Inc. to remove trade mark number 816557 (classes 9, 36 and 42) – Alice Inspired (Word) - in...

[2020] ATMO 147

TRADE MARKS ACT 1995

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

Re:Opposition by Alice Corporation to application pursuant to section 92 of the Trade Marks Act 1995 (Cth) by Fivepals, Inc. to remove trade mark number 816557 (classes 9, 36 and 42) – Alice Inspired (Word) - in the name of Alice Corporation Pty Ltd

Delegate:

Kate Doherty

Representation:

Opponent: AJ Park Intellectual Property

Applicant: Self represented

Decision:

2020 ATMO 147

Trade Marks Act 1995 (Cth) – opposition pursuant to section 96 – s 92(4)(b) application for removal - Removal Opponent’s evidence shows no use of the Trade Mark during the relevant period – no reasons to apply the Registrar’s discretion - Trade Mark to be removed from the Register

Background

1. This is a decision on the written record for an application for removal made on 25 October 2017 pursuant to s 92(4)(b) of the Trade Marks Act 1995 (‘Act’) by Fivepals, Inc. (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks (‘Register’):

Trade Mark No:               816557

Trade Mark:   ALICE INSPIRED (‘Trade Mark’)

Filing date:  8 December 1999

Owner:   Alice Corporation

Specification of Services: (at time of filing):

Class 9 Computer software in this class including that for financial applications, risk management applications and gaming

Class 36 Financial services including risk management services; insurance services; financial and insurance information services; gaming and betting services

Class 42 Design and development of computer software; software support services; computer programming services

2.    The application for removal is made in respect of all of the goods and services for which the Trade Mark is registered (the ‘Registered Goods and Services’).

3.    Alice Corporation (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 2 January 2018 and a Statement of Grounds and Particulars (‘SGP’) on 31 January 2018.

4.    The Applicant filed a Notice of Intention to Defend on 14 March 2018.

5.    The following evidence was filed with the IP Australia Office:

·Evidence in Support - Declaration of I Shepherd, the Chief Executive Officer of Alice Corporation, declared on 13 June 2018 (‘Shepherd declaration’)

·Evidence in Answer – Declaration of L Huria, Principal of AJ Park Law Limited, declared on 20 September 2018 (‘Huria declaration’)

·Evidence in Reply – Declaration of I Shepherd, the Chief Executive Officer of Alice Corporation, declared on 25 February 2019 (‘Second Shepherd declaration’)

·Late Evidence – Letter of I Shepherd, the Chief Executive Officer of Alice Corporation, filed on 27 July 2019 (‘Late Evidence’)

6.    The above declarations constitute the whole of the documents relating to evidence which were filed in the proceedings.

7.    Following the conclusion of the evidence stages no request to be heard in relation to the opposition matter was received and the decision was therefore decided on the written record.  The parties each filed written submissions.  I have decided this matter as delegate of the Registrar of Trade Marks on the basis of the material which has been filed.

The Opponent’s Other Marks

8.    The Opponent was also the owner of the following trade marks (‘Opponent’s other marks’):

Trade Mark No:               732816 (Now removed for non-payment of renewal fee)

Trade Mark:   ALICE

Filing date:  21 April 1997

Owner:   Alice Corporation

Specification of Services: (at time of filing): 9, 35, 36, 42

Trade Mark No:               939135

Trade Mark:   

Words:   ALICE CORPORATION (Fancy)

Filing date:  3 January 2003

Owner:   Alice Corporation

Specification of Services: (at time of filing): 42

The Law relating to non-use

9. Part 9 of the Act deals with removal of trade marks from the Register for non-use. In respect of this matter, the Applicant has applied for removal of the Trade Mark under s92(4)(b) of the Act and this section 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:            

…

(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.

1. Pursuant to s 92(4)(b) it is alleged that the registered owner has not used the trade mark upon or in relation to the registered goods and/or services at any time in the 3 year period defined above. In the present matter the relevant 3 year period of non-use is 25 September 2014 to 25 September 2017 (‘relevant period’).

2. An application pursuant to s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application.[1]  The filing date is confirmed by the Register and I am satisfied that five years have passed since the trade mark application was filed.

   [1] s 93(2) of the Act; see filing date at [1].

3. The Opponent bears the onus of rebutting an allegation of non-use. The burden of proof is the ordinary civil standard of the balance of probabilities.[2] In this respect s 100 of the Act relevantly provides:

   [2] Pfizer Products Inc. v Karam [2006] FCA 1663 and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156.

   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:
   [...]

   (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

   [...]

   (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.

4. In accordance with s 101, as delegate of the Registrar I may decide to remove the Trade Mark for all or some of the Registered Goods and Services, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established.[3]

   [3] S 101(3) of the Act.

5. Relevantly, I also note that the Federal Court has found in Woolly Bull Enterprises Pty Ltd v Reynolds[4] that a single bona fide use of the trade mark in the course of trade during the relevant period may be sufficient to rebut the allegation pursuant to s 92(4)(b).[5] If a single act of use is relied upon then it should be established by ‘if not conclusive proof, overwhelmingly convincing proof’.[6]

   [4] [2001] FCA 261 (‘Woolly Bull’).

   [5] Ibid, [17].

   [6] Nodoz Trade Mark (1962) RPC 1, 7.

   Late Evidence

6. Late evidence was received from the Opponent by e-Services on 27 July 2020, this material arrived without any application.  The letter annexes two letters which are dated within the relevant period.  A cover page for a submission is also included, but this is dated outside the relevant period. [7]

   [7] Further evidence, see [4] above.

7. I am not required to consider whether the late evidence is admissible pursuant to r 21.19 Trade Mark Regulations 1995 (Commonwealth) (The ‘Regulations’) or any other provision because the letter does not disclose any instance of use.[8]  The term ‘Alice Inspired’ is not present anywhere in the documents.  Only use of the Trade Mark can be considered in this application.  Therefore, in the absence of any application or compelling reasons to explain the delay for filing the late evidence, the late evidence was not considered in the opposition to the application for removal.

   [8] 21.19 Registrar may use information available

   (1)If:(a)information that is available to the Registrar is relevant to proceedings before the Registrar; and

   (b)the Registrar has reason to believe that the information is not known to a party to the proceedings; and

   (c)the Registrar proposes to take the information into account in making a decision in the proceedings;

   before making the decision the Registrar must:

   (d)provide the information to the party; and

   (e)give the party a reasonable opportunity to make representations about the information.

   (2)For the purposes of paragraph (1)(e), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

   Opponent’s Evidence

8. The Shepard Declaration contains the following claims, that I have summarised below:

   ·The Opponent began commercialising in the 1990’s.   

   ·From May 2007 to June 2014 the Opponent was involved in intellectual property litigation in the United States in relation to infringement of their patent.[9]

   ·Since 2014 the Opponent has continued commercialisation without a patent. [10]

   ·The Opponent states that the Trade Mark is prominently displayed on their website and stationary, no examples are provided and this use does not nominate a time period.

   ·The Opponent states that no-invoices are available showing use of the Trade Mark.

   [9] Shepard Declaration, [1].

   [10] Shepard Declaration, [4].

   Obstacles to Use

9. To successfully oppose the Application under s 92(b) of the Act the Opponent must establish that it has used the Trade Mark (either through use or circumstances that were an obstacle to use)[11] or, in the event that the Opponent fails to establish use as defined in s 100 of the Act, the Opponent asks that the Registrar exercise its discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register for any of the classes.

   [11] s100 of the Act.

10. The Opponent has declared that significant litigation in the US Supreme Court caused an obstacle to use of the Trade Mark in the relevant period, pursuant to s 100(3)(c) of the Act. The evidence suggests those court proceedings were finalised in 2014. Though this time period overlaps with part of the relevant period, the litigation did not extend throughout the relevant period. There is no evidence before me which persuades me that an obstacle for use has been present which would overcome the opposition.

    Use of the Trade Mark in the relevant period

11. The threshold for the defence of obstacle to use has not been met.  Therefore, I will now consider whether there has been actual use of the Trade Mark on, or in relation to, the Registered Goods and Services, specifically use of the Trade Mark in relation the nominated classes.  

12. The Opponent states:

    ‘Alice’ and all of its derivative terms are now extraordinarily well known internationally. Tens of thousands of articles have been written on the Company in respect of its CLS litigation.[12]

    [12] Shephard Declaration, [3].

13. Use in academic or professional literature is not use as a Trade Mark pursuant to s 7.  Commentary in these kinds of literature, reports of or relating to the associated legal proceedings do not constitute relevant use. 

14. Use of the Opponent’s other marks do not constitute use of the Trade Mark as registered pursuant to s 7.[13] Therefore, any use of the Opponent’s other trade marks within the evidence is not relevant to the considerations of this matter.

    [13] See above at [8].

15. I note from the evidence that the Opponent is the owner of the internet domain name However, domain names are not trade marks. The Opponent’s domain name  does not include the Trade Mark and has no association with the term ‘inspired’.[14]  No evidence of the website was provided and there is no evidence before me that the term ‘Alice Inspired’ is used on the website.  The Opponent states:

    The mark ‘Alice Inspired’ has, to date, not been used publicly. However, it is intended that the mark will be used in the Company’s forthcoming product offering, especially as this offering will not be underpinned by the many patents the Company previously held.

    I accept that goods or services may not need to be offered publicly for ‘use’ pursuant to s 7 to occur, for example many goods are wholesaled, and the relevant public are wholesalers rather than the community at large.  This concession does not overcome that there is no use of the Trade Mark, specifically, the term ‘Alice Inspired’ in any of the evidence before me.

    [14] Huria Declaration, [6].

16. I find that the Opponent has failed to establish that the Trade Mark was applied to, or used in relation to, any of the nominated goods and services in Australia during the relevant period.

    Registrar’s Discretion

    26.   The Opponent has stated a new application has been filed in relation to the same Trade Mark for the same classes.  Although the new application will have a new priority date, there is no reason before me as to why the original priority date should be preserved where no use was established during the relevant period.  Per Societe Anonyme des Eaux Minerales d’Evian v The Natural Yogurt Co evidence is required to discharge the onus of proof.[15]

    [15] Societe Anonyme Des Eaux Minerales d’Evian v the Yoghurt Co Pty Ltd [2012] ATMO 53 [31].

    27. On these facts considerations in relation to exercising the discretion are not enlivened, while the discretion at s 101(3) has been described as ‘unlimited’,[16] the discretion must be exercised ‘judicially on reasonable grounds that are capable of being clearly stated’.[17] The absence of evidence, including any declaration or evidence of use at the relevant time or any time does not allow me to approach the threshold of ‘reasonable grounds’ and I find s 101(3) is not enlivened.

    [16] Pioneer Computers Australia Pty Ltd v Pioneer KK (2009) 176 FCR 300 at [167], [172] and [173].

    [17] Re Rawhide Trade Mark [1962] RPC 133 (Ch D).

    Decision

    28.   I find the Opponent has not established its opposition to removal and the Trade Mark should be removed from the Register in respect of any of the Registered Goods and Services for which it is registered.

    29.   Accordingly, I direct that trade mark registration 816557 is removed from the Register.  If the Registrar is served with a notice of appeal one month from the date of this decision, I direct that the registration be dealt with as the Court sees fit.

    Costs

    30. The Applicant has been successful in relation to the application for removal of the Trade Mark and has requested its costs. I direct that costs in relation to trade mark registration 816557 be awarded against the Opponent in accordance with Schedule 8 of the Trade Marks Regulations 1995.

    Kate Doherty

    Hearing Officer

    Oppositions and Hearings

    Trade Marks and Designs

    1 September 2020