Re: Opposition by David Francis Mair to an application under section 92 of the Act by Data Republic Pty Ltd to remove trade mark number 1024337 Republic in the name of David Francis Mair
[2019] ATMO 104
•4 July 2019
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by David Francis Mair to an application under section 92 of the Act by Data Republic Pty Ltd to remove trade mark number 1024337 - REPUBLIC - in the name of David Francis Mair.
Delegate: M. Cooper Representation: Opponent: Francesca Colubriale of Spruson & Ferguson
Applicant: Lucy Meadley and Tom Griffin of DLA PiperDecision: [2019] ATMO 104
Trade Marks Act 1995 - opposition to application under s 92(4)(a) and (b) to remove trade mark from Register for non-use – use demonstrated for some Services - s 92(4)(b) grounds partially established.Background
1. This matter concerns the opposition by David Francis Mair (“the Opponent”) to an application under ss 92(4)(a) and (b) of the Trade Marks Act 1995 (“the Act”) by Data Republic Pty Ltd (“the Removal Applicant”), to remove the Opponent’s trade mark no. 1024337 (“the Trade Mark”) from the Register for non-use. The application for removal was made on 13 June 2017. It was made in relation to all the services for which the Trade Mark is registered.
2. On 12th October 2004, the Opponent applied to register the following trade mark:
Trade Mark no. 1024337
REPUBLIC
3. The services for which the Trade Mark is registered are as follows:
Class 35:
Business management, business administration services; public relations, marketing and brand consultancy services. (“the Services”)
4. A Notice of Intention to Oppose (“the NIO”) the removal application was filed by the then-owner, Republic Consulting Pty Ltd, on 22 August 2017. Notification of the assignment of the Trade Mark to the Opponent was received on 18 August 2017 and the NIO was subsequently amended to reflect this. On 22 September 2017 the Opponent filed a Statement of Grounds and Particulars (“the SGP”).
5. A Notice of Intention to Defend (“the NID”) was filed by the Removal Applicant on 7 December 2017.
Evidence
6. The evidence filed in relation to this removal opposition comprises:
· Evidence in Support
Ø Declaration of David Francis Mair, former director and secretary for Republic Consulting Pty Ltd (the former owner of the Trade Mark) dated 11 March 2018, with Annexures A and B (“the Mair declaration”).
· Evidence in Answer
Ø Declaration of Danny Gilligan, co-founder and non-executive chair of the Removal Applicant, dated 15 June 2018 (“the Gilligan declaration”).
7. On 10 October 2018 the Opponent requested a hearing. The matter was heard by me, as delegate of the Registrar of Trade Marks (“the Registrar”), in Canberra on 4 April 2019. Both parties filed written submissions in accordance with the directions issued. Supplementing the filed written submissions, Francesca Colubriale of Spruson & Ferguson appeared for the Opponent while Lucy Meadley and Tom Griffin, both of DLA Piper, appeared for the Applicant.
The Opponent’s Evidence
8. In his declaration, Mr. Mair stated that the Trade Mark was first used in January 2003 by Republic Consulting Pty Ltd (“the former owner”), of which he had been a director until its voluntary administration. He said he acquired the former owner’s assets, which included the Trade Mark, on 12 July 2017. An assignment of the Trade Mark in favour of the Opponent was recorded by IP Australia on 11 September 2017.
9. Mr. Mair identified the relevant non-use period as from 13 May 2014 to 13 May 2017 and maintained that the Trade Mark had been continuously used by the former owner during that time. He claimed the Services, in particular, reputation management, litigation management, government and media relations and financial communications, were provided under or by reference to the Trade Mark. He further claimed that the website was registered in or about 2004 and the Services were promoted on it under or by reference to the Trade Mark. He annexed printouts from the Internet Wayback Machine[1] of that website landing page. A series of redacted invoices issued from 25 January 2014 to 17 March 2017 were also annexed.
[1] Removal Applicant’s evidence
10. In his declaration Mr. Gilligan outlined the Removal Applicant’s operation as a data exchange platform and marketplace which partners with a “number of strategic investors and technology clients to future proof their data collaboration” and “allows companies to ensure their data is securely encrypted and stored before provisioning access to authorised parties”. He said that the Removal Applicant has sought to register the trade mark “Data Republic” in classes 35 and 42 (no. 1767685) and that during examination of that mark the Trade Mark was cited as a prior registered mark. He claimed that neither he nor, to his knowledge the Removal Applicant, had heard of the Opponent or the Trade Mark prior to it being cited. He noted that the Opponent operates “in an entirely different market and industry” to that of the Trade Mark and he has “never heard of any stakeholder or member of the data analysis and exchange industry having been confused between Data Republic’s Trade Mark and the Trade Mark…”. He further stated that “I consider the REPUBLIC trade mark is not well known in Australia”.
Submissions
11. In its written submissions the Opponent sought to rebut the non-use allegations, contending that the annexures to the Mair declaration provided clear evidence of use of Trade Mark (by the former owner, who was the Opponent’s predecessor in title) in respect of the Services in the relevant period. It submitted that the contents of the Gilligan declaration were irrelevant to the determination of the issues in this regard. In the alternative the Opponent sought that the Registrar should decide “that the Trade Mark should not be removed from the [R]egister in accordance with section 101(3) of the TMA.”
12. In its written submissions the Removal Applicant noted that the evidence of Trade Mark use provided by the Opponent was of “Republic Be Heard” with a four-square device (“the Logo Mark”) and not use of the Trade Mark. Referring to the relevant authorities, it submitted that this was not use of the Trade Mark but evidence of use of a distinctive trade mark with additions and alterations which substantially affected its identity. Even if use of the Logo Mark was relevant, the invoice evidence only demonstrated minimal use that did not relate to all the Services covered by the registration but only to public relations, marketing and brand consultancy services. The Removal Applicant also contended that the Internet Wayback Machine evidence did not assist the Opponent for reasons I discuss further below.
Onus and Grounds
13. At the hearing, the Removal Applicant confirmed it no longer pressed the s 92(4)(a) ground. I have treated that ground as abandoned. Had it been pressed it would have been unnecessary to consider it anyway because the application also nominated a ground for removal under s 92(4)(b).[2]
[2] See, eg, Live Entertainment Investments III Pty Ltd v The Education Group Pty Ltd (2018) 132 IPR 131, 136-7 [21]-[22].
14. In respect of the proceedings under s 92(4)(b), s 100 of the Act provides that the Opponent bears the onus of rebutting the allegation of non-use.
15. If the Opponent establishes use of the Trade Mark, (or the Trade Mark with additions or alterations not substantially affecting its identity), or that there was an obstacle to use of the Trade Mark during the relevant period, it is taken to have rebutted the allegation: s 100(3). A single instance of bona fide use during the relevant period is all that is required[3].
[3] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [14-17].
Legislation
16. 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 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.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.
17. If the grounds of the non-use application are established, the Registrar has a discretion, under s 101(3) of the Act, to decline to remove the trade mark, or to remove it in respect of only some of the goods and services identified in an application, if satisfied that it is reasonable to do so. In deciding whether to exercise the discretion not to remove the trade mark, the Registrar may consider whether the registered owner has used it in respect of similar or closely related goods and services (s 101(4)).
Consideration and Reasons
18. 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 12 October 2004. It has therefore 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 clear that it has been over 5 years since the filing date of the application for registration (s 93(2)).
Use of the Trade Mark
19. In the circumstances of this matter and for the purposes of s 92(4)(b), the Opponent must demonstrate that it has used the Trade Mark, or the Trade Mark with alterations or additions that do not substantially affect its identity, on all the Services to which the removal application relates, within the three year period ending on 13 May 2017 (“the relevant period”) (s 100(3)(a)). Alternatively, it must demonstrate that there was an obstacle to use of the Trade Mark during that period (s 100(3)(c)).
20. In its SGP, the Opponent relevantly claimed that it or its predecessor in title had used the Trade Mark “in connection with services in the nature of business administration, public relations and brand consultancy”, since “at least” 2004 and continuously since that time.
21. As noted above, the Opponent’s evidence included copies of invoices and of its website landing page during the relevant period which purportedly demonstrated use of the Trade Mark. Aside from the domain name however, the use was not use of the Trade Mark as registered but use of the Logo Mark displayed below.
22. It is therefore necessary to determine whether the Opponent’s use of the Logo Mark can be appropriately characterised as use of the Trade Mark with additions or alterations that do not substantially affect its identity (s 7(1) and s 100(3)(a) of the Act).
23. In Sports Warehouse, Inc v Fry Consulting Pty Ltd, Kenny J said:
Adapting Windeyer J’s statement to the inquiry under s 7(1), whether a person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark requires a side by side comparison of the trade mark with the alleged use, assessing the importance of their similarities and differences having regard to the essential features of the trade mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[4]
[4] Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664. [154] (“Sports Warehouse”).
24. Similarly, as Yates J said in Optical 88 Limited v Optical 88 Pty Limited (No. 2) when considering this issue, (bold emphasis added):
Is the modified ‘707 mark a use of the ‘707 mark with additions or alterations not substantially affecting its identity? For that question to be answered affirmatively it is necessary to find that a total impression of similarity emerges from a comparison between the two marks: Carnival at 391; Shell at 414. In my view a total impression of similarity does emerge from a comparison of the modified ‘707 mark with the ‘707 mark itself. I therefore find that, by using the modified ‘707 mark, the applicant used the ‘707 mark with additions or alterations not substantially affecting its identity.[5]
[5] Optical 88 Limited v Optical 88 Pty Limited (No. 2) [2010] FCA 1380, [256] (“Optical 88”); see also Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6, [119] (“Anchorage”).
25. A side by side comparison between the Trade Mark and the Logo Mark appears below:
Trade Mark
Logo Mark
REPUBLIC
26. The Trade Mark is one word and the Logo Mark comprises three words and contains a device. While the additional words in the Logo Mark are presented in a subtle manner and do not overwhelm the impression of the word REPUBLIC, the four-square device has at least equal prominence and is visually striking. I do not consider that “a total impression of similarity” emerges. It follows that I am not satisfied that the use of the Logo Mark constitutes use of the Trade Mark with additions or alterations that do not substantially affect its identity.
27. At the hearing, the Opponent sought to rely on Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd[6], noting that use of HARBOUR LIGHTS with the addition of stars and other words, which were not descriptive, was found to still constitute use of the HARBOUR LIGHTS simpliciter with additions or alterations that did not substantially affect its identity. Similarly, it contended that the word “REPUBLIC” was prominent while the four-square device and the words “Be Heard” were diminished in comparison. Therefore, use of the Trade Mark in this form, should be regarded as use with additions or alterations that did not substantially affect its identity.
[6] [2017] FCAFC 56 (“Accor”).
28. The Removal Applicant sought to rebut the Opponent’s submissions regarding Accor, contending that the additional words and stars in the trade mark there under consideration were related to HARBOUR LIGHTS in a way in which “Be Heard” and the four-square device do not relate to the Trade Mark. It submitted that this was not a circumstance, like Accor, where the additional elements described the mark. Instead, the Removal Applicant submitted that Deckers Outdoor Corporation v B&B McDougal ,[7] in which the omission of a hyphen was found to have substantially affected the identity of that trade mark, was apposite.
[7] [2006] ATMO 5 (“Deckers”).
29. In Accor the Full Federal Court overturned the primary judge’s findings, stating:
In our view, we strongly doubt whether the five gold stars appearing above the words “Harbour Lights” qualifies as a device. In any event, even if the adoption of the five gold stars constitutes a device, the device does not substantially affect the identity of the trade mark in the words alone. The device is simply an addition to the registered trade mark with the result that use of the trade mark with the five gold stars nevertheless constitutes use of the registered trade mark for the purposes of s 7(1) of the Act. We respectfully disagree with the primary judge that the addition of the five gold stars in combination with the de minimis words “A New Star Shines” gives rise to such a degree of interconnection and allusion, one to the other, as to substantially affect the identity of the trade mark in the words alone.[8]
[8] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [213].
30. I note that, in coming to this conclusion, when considering s 58 of the Act and whether the trade mark as used was a composite mark, the Full Federal Court had identified the words “Harbour Lights” as the dominant cognitive cue[9]. It said of the five stars that “[t]he reader might well be invited to think that “HARBOUR LIGHTS” embodies … qualities conventionally or often anecdotally described as “five star” and that they “seem, in some fashion, to herald “HARBOUR LIGHTS” to the eyes of the viewer”. The words “a new star shines” were “barely noticeable” and “are presented in the arrangement of features in very diminished text (in the nature of a slogan) under the emphatic capitalised text of the trade mark words “HARBOUR LIGHTS” [10].
[9] Ibid. [206]
[10] Ibid. [207-209]
31. In this context I also note the comments of the High Court in E & J Gallo Winery v Lion Nathan Australia Pty Ltd as to whether there had been use of a substantially identical mark:
The addition of the device to the registered trade mark is not a feature which separately distinguishes the goods or substantially affects the identity of the registered trade mark because consumers are likely to identify the products sold under the registered trade mark with the device by reference to the word BAREFOOT. The device is an illustration of the word. The monopoly given by a registration of the word BAREFOOT alone is wide enough to include the word together with a device which does not substantially affect the identity of the trade mark in the word alone. So much is recognised by the terms of s 7(1), which speak of additions or alterations which “do not substantially affect the identity of the trade mark”.[11]
[11] (2010) 241 CLR 144, [170].
32. The four-square device in the Logo Mark is not an illustration of the word “REPUBLIC”. It sits alongside and has greater height than, and at least equal prominence to, the word “REPUBLIC” and as such it is a visually striking and distinctive feature. Unlike the additions to the words HARBOUR LIGHTS in Accor, in the circumstances of this removal application, I do not consider that REPUBLIC is the sole dominant cognitive cue, the four-square device being at least equally dominant. Furthermore, the four-square device has no function similar to that of the five stars as identified by the Full Court. That is, it does not suggest a quality of or a qualification to the word REPUBLIC. While the words “BE HEARD” are diminished in size, they appear in the same capitalised text, unlike the words “a new star shines” in the Accor trade mark.
33. I have also had regard to the oft-cited comments in Express Newspapers v Star Newspaper where the hearing officer, in considering the findings in Morny Ltd’s Trade Mark (1951) 68 RPC 55, said:
[I]f registration of a name or word or other mark takes a particular form, then it is to be inferred that it is intended to confine the mark and its use to that form. If not registered in a particular form, then a mark may be safeguarded by use in some different form, provided that its name or other significance comes shining through. This leaves the unresolved question: “what constitutes a particular form?” In a certain sense, every mark registered may be said to have a particular form, that is the form in which it was registered. But what it seems to me that the Master of the Rolls was saying was that “particular form” means out of the ordinary. Thus “MORNY” in plain block capitals is not a registration in an out of the ordinary form and may be used as a trade mark with various elements provided “Morny” remains discernable as the essential feature. [12]
[12] [1984] IPD 7090 as cited in Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271, [56].
34. I consider the presence of the four-square device along with the additional words BE HEARD in the Logo Mark are such that REPUBLIC simpliciter is no longer discernible as the essential feature of the Trade Mark.
35. For all the above reasons I am not satisfied that use of the Logo Mark constitutes use of the Trade Mark “with additions or alterations not substantially affecting its identity”.
36. It follows that, in respect of the use of the Logo Mark, the Opponent has failed to rebut the allegation of non-use under section 92(4)(b).
The Opponent’s website
37. Relying on Sports Warehouse,[13] and evidence from the Internet Wayback Machine, the Opponent submitted that the appearance of the Trade Mark on its website, in the relevant period, constituted use of the Trade Mark. Contrary to the Removal Applicant’s argument, it contended that it did not need to demonstrate “extensive use” and evidence of a single use was sufficient to rebut the allegation of non-use.
[13] [2010] FCA 664.
38. Relying on Ward Group Pty Ltd v Brodie & Stone Plc,[14] the Removal Applicant sought to rebut the Opponent’s contention that the screenshots it provided of its website demonstrated use of the Trade Mark. It submitted that, as mere screenshots of a landing page, they did not demonstrate a functioning website. It also submitted that there was no Trade Mark use demonstrated in relation to all the Services. If use was established, the Removal Applicant argued it should be restricted to the precise services demonstrated in the evidence.
[14] (2005) 64 IPR 1 (“Ward Group”).
39. The Opponent submitted that the Ward Group decision was clearly distinguishable because the present matter concerned an Australian website targeting Australian consumers. It also noted that the landing pages listed the services available from the site, thereby demonstrating a connection in the course of trade between the Services and the Trade Mark.
40. In a context in which I have determined that use of the Logo Mark does not constitute use of the Trade Mark, to establish use in the relevant period, the Opponent needs to demonstrate that use of the Trade Mark on its website constitutes use “in relation to those goods and/or services” as required by s 100(3).
41. In Solahart Industries Pty Ltd v Solar Shop Pty Ltd[15] an analogy was drawn between a website from which goods or services are sold and a sign on a shop front indicating that goods are sold within that shop. In that matter, Solarhut had advertised its services by reference to its trade mark ‘SOLARHUT’ and had invited consumers to use its website located at ‘ Goods were available for purchase at the website under the name SOLARHUT. The court said in those circumstances it was clear that there was trade mark use as the website was “largely analogous to a shop front”.
[15] [2011] FCA 700, [50].
42. While the Opponent has provided no evidence of any searches for, or visits to, the website, the landing pages uniformly note that “REPUBLIC is a company that specialises in corporate communication and public affairs” and offer the Opponent’s services of “strategic help in the areas of reputation management, government and media relations, as well as financial communications. We also provide media and presentation training.”
43. In relation to what constitutes use of a service mark, in Optical 88, Yates J referred to the observations of Gummow J in Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495, which he said “are apposite when considering the notion of trade mark use in relation to so-called service marks in the context of a removal action under s 92 of the Trade Marks Act”. Gummow J said (at 509):
This, like many of the other authorities, was concerned with user in relation to goods, rather than services. In adapting what was said by Windeyer J to user of a service mark, it has to be remembered that whilst the same may be true of contracts for supply of future or unascertained goods, a service will not exist before its supply. Thus, the use of a trade mark in relation to services may readily be understood as a use in and about the soliciting and conclusion of contracts for the supply thereafter of services.[16]
[16] Optical 88 [2010] FCA 1380, [217].
44. Even though the Opponent’s website landing pages do not demonstrate actual delivery of any of the Services, they do solicit consumers for the supply of the services listed therein. As such I am satisfied that the landing pages operated in a manner ‘largely analogous to a shop front’ and, on this basis, that they demonstrate Trade Mark use in the relevant period in relation to the services listed on them.
45. The comments of the Federal Court in Edwards vLiquid Engineering 2003 Pty Ltd[17] are also pertinent:
Before proceeding any further, I first note in Brother Industries Ltd v Dynamic Supplies Pty Ltd [2007] FCA 1490; (2007) 163 FCR 530 at [53]- [54], Tamberlin J pointed out that under ss 7 and 9 of the TMA, a trade mark is taken to be used in relation to goods and services if it is applied to, among other things, packaging labels, signs, invoices, business letters, and business papers. Here, the word "Liquideng" was applied by Edwards and LFS in just such ways. It follows that application of that word was its use as a trade mark.
[17] [2008] FCA 970, [21]. This finding was not disturbed on appeal.
46. The invoices provided by the Opponent in the relevant period also include the domain name, thereby not only demonstrating use of the Trade Mark and delivery of services by reference to it, but also enabling the inference that, contrary to the Removal Applicant’s claims, the website did function.
47. It remains to be determined whether the above use is use in relation to the Services.
Use in relation to the Services
48. The Removal Applicant submitted that the invoices, if accepted as demonstrating Trade Mark use, only demonstrated minimal use that did not relate to the Services covered by the registration but only to public relations, marketing and brand consultancy services.
49. The Opponent referred to the Mair declaration, and particularly invoices of 30 April 2015 and 24 August 2015, as demonstrating use of the Trade Mark in relation to the Services of business management and business administration.
50. The invoices, some containing headings “Public Relations”, “Public Affairs Support” or “Media training and message development”, refer to the provision of the following services:
· Draft and distribution of media releases
· Media liaison and briefing/ public affairs support
· Cameraman
· Edit and streaming
· Event management
· Account management
· Issues management
· Client reports
· Website news clippings and media monitoring
· Internal and external meetings and communications
· Message development facilitation
· Presentation and speech development
· Communications development (draft newsletter content)
51. I am satisfied that the nature of the services delivered are relevantly encompassed by the broad categories of marketing, public relations and brand consultancy services however I am not satisfied that the evidence supports a finding that business management or business administration services were delivered under or by reference to the Trade Mark. While the “account management” services suggest a business administration function they could just as likely be referring to other activities associated with managing the client’s account such as those associated with public relations and marketing. This view is supported by the fact that the invoices for these services are headed “Public Affairs Support”.
52. As the Court commented in Optical 88:
The onus falls on the opponent to the removal application (in this case, the applicant in the proceeding) to rebut the allegations that have been made: see s 100(1). It is, of course, the opponent who will know what use, if any, it has made of the mark the subject of the removal application. The opponent cannot be heard to complain of what might be found to be deficiencies in proof of the use that is relied on in order to rebut the allegation of non-use, when it has the means at its disposal to show precisely how, when and where the challenged mark was used.
The applicant for removal (the first respondent in this proceeding) bears no risk in that regard and, as s 100(1) recognises, is entitled to stand squarely behind the allegations that are made to actuate s 92(4)(a) and s 92(4)(b)…. Thus, it is the opponent (the applicant in this proceeding) who must make good the case, in all its dimensions, for a challenged mark to remain on the Register.[18][18] [2010] FCA 1380, [204]-[205].
53. I consider that the Opponent would have had ‘the means at its disposal to show precisely how, when and where the challenged mark was used’ however other than the invoices which indicate the provision of a limited range of relevant services, it has failed to do so in respect of all the Services.
54. In the circumstances, without more from the Opponent, I am not satisfied that there has been use of the Trade Mark in the relevant period in respect of the business management and business administration services.
Conclusions as to use
55. For the above reasons, I am satisfied that the Trade Mark was used in good faith during the relevant period in respect of public relations, marketing and brand consultancy services. It follows in respect of those services, that the Opponent has rebutted the Removal Applicant’s claims of non-use in the relevant period (s 100(3)(a)).
56. Conversely, in relation to business management and business administration services, I am not satisfied that the Opponent has discharged its obligation to rebut the allegation made by the Applicant under s 92(4)(b).
57. There is no claim or any evidence that that there was any obstacle to use for the purposes of s 100(3)(c).
58. Accordingly, I am satisfied that the grounds on which the application was made have been partially established.
Registrar's discretion
59. It remains for me to determine whether to exercise the discretion not to remove the Trade Mark in respect of business management and business administration services. The recent comments of Rares J in Calico Global Pty Ltd v Calico LLC are pertinent in this regard:
Section 101(3) can only apply because Calico LLC has established the grounds for removal of the registration in class 44 of the 184 mark. … But, the Court will only exercise its discretion under s 101(3) if the registered owner or assignee establishes, as the section requires, that it is reasonable to do so in its favour.
…
Jacobson, Yates and Katzmann JJ held that for the discretion under s 101(3) to be exercised in favour of the registered owner, that person had the onus of positively satisfying the Court that it was reasonable that the trade mark should not be removed: Austin Nichols 202 FCR at 500 [44].[19]
[19] Calico Global Pty Ltd v Calico LLC [2018] FCA 2096, [125-127].
60. As noted above, the Opponent asserted in written submissions that if I found the grounds for removal established, I “should nonetheless decide that the Trade Mark should not be removed from the register in accordance with s 101(3) of the TMA”. At the hearing the Opponent referred to Austin, Nichols & Co Inc vLodestar Anstalt (No 1)[20] and contended that the discretion is broad and should be exercised. In the absence of any specific submissions from the Opponent in this regard, which were not forthcoming even when I requested them at the hearing, I have considered the relevant factors. In this regard, I observe that there is no substantiated evidence of any international profile or use of the Trade Mark in Australia after the relevant period or any indication of the owner’s intentions. Similarly, there is no indication of any public mischief if the Trade Mark remains on the Register, and correspondingly no evidence or claim of any market confusion which might arise, either in Australia or internationally, if the Trade Mark is removed for business management and business administration services. Furthermore, there is nothing before me which establishes or even suggests that the public interest or the interest of consumers would in any way be detrimentally impacted by the removal of the identified Services in the Trade Mark.
[20] (2012) 202 FCR 490, 494-5 [9]-[12].
61. I also note that s 101(4) of the Act provides that one of the factors which may be considered under s 101(3) is whether the Opponent has made use of the registered Trade Mark on similar goods or closely related services; or similar services or closely related goods. In the absence of any specific submissions in this regard, or of any persuasive evidence to support such a finding, I am not satisfied that the Opponent has used the Trade Mark on services similar or closely related to business management or business administration.
62. As noted above, it is the Opponent which bears the onus of satisfying the Registrar that the discretion under s 101 ought to be exercised[21]. While acknowledging the broad discretion available under s 101(3), having carefully considered all the claims and material before me, the Opponent has failed to satisfy me that it is reasonable to exercise the discretion not to remove the Trade Mark in respect of those identified Services for which use has not been demonstrated.
[21] Optical 88 [2010] FCA 1380, [273]
Decision
63. 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.
64. As the Opponent has been partially successful, I direct that one month from the date of this decision the Trade Mark be removed from the Register for all the Services in respect of which it is registered other than “public relations, marketing and brand consultancy services”.
65. 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
66. The Opponent sought costs. Given that both parties have been partially successful, I make no orders in this regard.
Mary-Ann Cooper
Hearings Officer
Trade Marks and Designs Oppositions and Hearings
4 July 2019
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