Re: Opposition by ESG Media Pty Ltd to registration of trade mark application number 1867097 (class 42) CODEBREWERY in the name of Jeremy John Hague & Kate Louise Jones both as trustees for Hague Family Trust
[2020] ATMO 87
•25 May 2020
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by ESG Media Pty Ltd to registration of trade mark application number 1867097 (class 42) - CODEBREWERY - in the name of Jeremy John Hague & Kate Louise Jones both as trustees for Hague Family Trust
Delegate: Katrina Brown Representation: Opponent: Written submissions by Helen Peachey of IP Solved
Applicant: No submissionsDecision: 2020 ATMO 87
Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 59 & 62A pursued – s 59 established – registration refused.Background
This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (‘Act’) by ESG Media Pty Ltd (‘Opponent’) to the registration of the following trade mark:
Trade Mark No: 1867097
Trade Mark: CODEBREWERY (‘Trade Mark’)
Applicant:Jeremy John Hague & Kate Louise Jones both as trustees for the Hague Family Trust (‘Applicant’)
Filing Date: 18 August 2017
Services:Class 42: Advisory services relating to computer systems design; Computer security services (design and development of secure computer hardware, software and systems); Computer software design; Consultancy in the design and development of computer hardware; Consultancy in the design and development of computer software; Creating and designing web pages for others; Creating and designing web pages for others, including creating virtual communities for registered users to interact and participate in discussions; Creating and designing website-based indexes of information for others (information technology services); Database design; Design and development of computer software (for others); Design and development of online calculators; Design and development of search engines; Design consultancy; Design of games; Information technology (IT) services (computer hardware, software and peripherals design and technical consultancy); Web site design; Web site design consultancy
The trade mark application was examined as required under s 31 of the Act. Acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 4 January 2018.
The Opponent filed a Notice of Intention to Oppose on 2 March 2018 followed by a Statement of Grounds and Particulars (‘SGP’) on 19 March 2018.
The Applicant filed a Notice of Intention to Defend on 18 May 2018.
The Opponent filed the following declaration as evidence in support of its opposition:
·Declaration of Anthony Muscat (Director of Opponent) made on 22 August 2018 with Exhibits AM-1 to AM-13 (‘Muscat Declaration’).
The Applicant did not file evidence in answer during the period in which to do so.
On 18 December 2018 IP Australia wrote to the parties advising that the evidence in answer stage had ended and that either party could now request a hearing. Neither party did so and accordingly the parties were duly informed that the matter would be decided based on the material properly filed during the proceedings including evidence and any written submissions.
The Opponent filed written submissions on 25 February 2019. The Applicant did not file written submissions.
On 10 April 2019 the Applicant filed a declaration (‘Applicant’s Declaration’) followed by a request on 11 April 2019 for an extension of the period in which to file evidence in answer. An Assistant Hearing Officer assessed the request for the extension of time and was not satisfied that it was appropriate to grant the extension. The Applicant provided further information however the Assistant Hearing Officer did not find it persuasive. On 12 July 2019, the Applicant was informed that the intention to refuse the extension was being maintained and that a hearing may be requested in relation to the intention to refuse the extension.
The Applicant did not apply for a hearing in relation to the extension of time. On 30 July 2019 the Applicant was informed that the extension of time had been refused. Consequently, the Applicant’s Declaration is not evidence in answer; it is material filed out of time.
Material filed out of time may be considered by the hearing officer pursuant to reg 21.15(4) of the Trade Mark Regulations 1995 (‘the Regulations’). This was brought to the Applicant’s attention in correspondence from the Assistant Hearing Officer on 12 July 2019 and 30 July 2019. The Applicant was provided with the opportunity to make a compelling case as to why the hearing officer should consider the Applicant’s Declaration when deciding the opposition. The Applicant did not avail itself of this opportunity.
I will now decide the opposition. In doing so, I have not had regard to the Applicant’s Declaration for the reasons explained above.
Grounds of opposition, onus and relevant date
In the SGP, the Opponent nominated grounds under ss 42(b), 59 and 62A of the Act.
The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[1] In the event that the Opponent establishes one of the grounds in relation to all of the services specified in the trade mark application, there is no requirement for me to consider the other grounds of opposition.
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32].
The standard of proof is the ordinary civil standard of the balance of probabilities.[2]
[2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [133].
The date at which the rights of the parties are to be determined is 18 August 2017 being both the filing date and the priority date of the Trade Mark.
The Opponent’s evidence
Mr. Muscat declares that the Opponent was established on 20 October 2012 and that it is:
a small independently owned software development studio, with headquarters in Sydney. The core services provided to the opponent’s clients includes the scoping, design and development of websites and smartphone and tablet applications, as well as other digital media services.
In April 2017 the Opponent decided to rebrand. The Opponent engaged the services of DM Brand Strategy (now Insanis) to assist with the rebranding. Mr. Muscat states that he and/or Insanis conducted various searches and surveys in the process of rebranding the business. Mr. Muscat comments:
The research which I and the instructed design agency Insanis carried out in 2017 did not locate any use of CODE BREWERY as a trade mark or as the name by any other company or business, specifically I did not locate any use of this mark or name by an IT or software company in the Australian marketplace.
On 21 July 2017, Mr. Muscat notified Insanis that the Opponent would be adopting CODE BREWERY as its new trade mark.
Mr. Muscat confirms that whilst conducting research concerning the new name and trade mark, he became aware that the domain name (‘Applicant’s domain name’) was registered to Jeremy Hague (‘Mr. Hague’). The date at which he became aware of the Applicant’s domain name is not provided. However, from the evidence detailed below at [21] I take it that Mr. Muscat was aware of the Applicant’s domain name since at least 25 July 2017. He also confirms that he visited the website and it was inactive.
Mr. Muscat states that he thought Mr. Hague might be open to selling the domain name, particularly as it was not in use and appeared never to have been used. Accordingly, Mr. Muscat authorised his business associate Mr. Scott to approach Mr. Hague to see if he was interested in selling the domain name. Exhibit AM-2 is declared to be a copy of this initial approach and Mr. Hague’s subsequent response. The emails are dated between 25 July 2017 and 27 July 2017. Ultimately, Mr. Hague declined the price offered by Mr. Scott.
On 27 July 2017 Insanis submitted to the Opponent the ‘first round of logo branding for CODE BREWERY’. In July and August 2017, the Opponent continued to develop its CODE BREWERY brand. Exhibits AM-3, AM-4, AM-5 and AM-6 which include emails, invoices and testimonials from various suppliers and business contacts, demonstrate the preparatory steps taken by the Opponent in relation to using CODE BREWERY as its brand.
On 11 August 2017, Mr. Muscat decided to reach out directly to Mr. Hague to ‘check if he would be open to negotiating the sale of the Applicant’s domain name’. It is declared that Mr. Muscat first contacted Mr. Hague on 11 August 2017 via telephone. At [36] of the Muscat Declaration, Mr. Muscat declares the following in relation to that telephone conversation:
During that call, Jeremy stated words to the effect to me that “he had owned the domain for a couple of years but wasn’t doing anything with it”. I also made him aware of our rebranding situation including the fact that the opponent had already expended funds in such research…, and that we had done the bulk of the rebranding work already, and basically the last step was to purchase a related domain name so that we could send everything off to print and launch our new website. Jeremy said he was open to selling the domain, however he’d need time to think about it.
After the telephone call, Mr. Muscat sent Mr. Hague an email. Exhibit AM-8 consists of email correspondence between Mr. Muscat and Mr. Hague from 11 August 2017 to 25 August 2017. The email correspondence can be summarised as:
·11 August 2017 – Email sent by Mr. Muscat thanking Mr. Hague for the conversation they had earlier that day in regards to purchasing the Applicant’s domain name and states ‘we’re currently quite far down the path of a rebrand and I’m interested in purchasing the domain name off you’. Mr. Muscat included a link to the Opponent’s website ‘so you can check out who we are and what we do’ and raised the possibility of Mr. Hague becoming a contractor for the Opponent.
·15 August 2017 – Email sent by Mr. Hague stating, ‘Happy to come and meet you at your Sydney office when I’m up there next’.
·15 August 2017 - Email sent by Mr. Muscat acknowledging that he is keen to discuss opportunities to work together and ‘Have you had any further thought on the domain name sale? As mentioned on our call, I am keen to launch our new brand by the end of August, hence hoping to sort out the domain soon’.
·18 August 2017 – Email sent by Mr. Hague stating that he is not looking to take any more work on. Mr. Hague also confirms that he is not actively trying to sell the Applicant’s domain name as he is ‘using it for product in stealth’ but he would be willing to sell it for the right amount and Mr. Muscat is invited to make his best offer.
·21 August 2017 – Email sent by Mr. Muscat stating the price he is willing to pay to purchase the Applicant’s domain name.
·23 August 2017 – Email sent by Mr. Hague declining Mr. Muscat’s offer.
·24 August 2017 – Email sent by Mr. Muscat asking Mr. Hague to indicate the price that he is willing to accept for the purchase of the Applicant’s domain name and that he would like to resolve the issue as soon as possible.
·25 August 2017 – Email sent by Mr. Hague indicating the price he would consider accepting for the sale of the Applicant’s domain name.
Mr. Muscat declares that he did not communicate any further with Mr. Hague as he thought the price indicated in Mr. Hague’s email of 25 August 2017 was extremely unreasonable.
On 24 August 2017, the Opponent took the following steps:
·Purchased the domain name ‘ the business name ‘Code Brewery’. This is confirmed by Exhibit AM-10 which consists of an extract from ASIC’s database showing that the business name ‘Code Brewery’ was registered to the Opponent on 24 August 2017.
·Mr. Muscat filed a trade mark application, on behalf of the Opponent, for ‘Code Brewery’ in class 42. This is trade mark number 1868482 (‘Opponent’s TM Application’).
·Commenced using CODE BREWERY as a trade mark and business name on a ‘more formal basis’.
Mr. Muscat declares that he was shocked when he received the examination report in relation to the Opponent’s TM Application. The examination report raised TM 1867097, which is the subject of the current opposition proceeding, as a barrier to the acceptance of the Opponent’s TM Application. Furthermore, Mr. Muscat declares the following:
[45] I comment that at no time during my telephone conversations with Jeremy or during our exchanges of emails with one another did he disclose that he had applied….to register CODEBREWERY as a trade mark.
[46] I also note that Jeremy did not signal during our telephone conversations or in any of our email exchanges the he or his sister had any interest or intention to use CODEBREWERY as a trade mark for business purposes.
Additionally, Mr. Muscat states that the Applicant has not used the Trade Mark or conducted any business using the Trade Mark. Exhibit AM-11 shows what appears to be the landing page associated with the Applicant’s domain name on 24 January 2018. The webpage consists of symbols, an image of a mug and the words ‘what is Jez brewing?’.
Discussion
Section 59 of the Act provides:
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
In Health World Ltd v Shin-Sun Australia Pty Ltd, Jacobson J described the nature of the intention under s 59 as:
A ‘real and definite intention’ of the applicant for registration, to use the mark publicly as a trade mark, although it is not necessary that the intention be immediate or within a limited time.[3]
[3] [2008] FCA 100 [160].
Oppositions have been successful under s 59 of the Act where the ‘evidence established the existence of only illegitimate purposes, including the use of the registration defensively, speculatively, to gain competitive advantage or to sell the trade mark’.[4]
[4] Suyen Corp v Americana International Ltd [2010] FCA 638 [212] (Dodds Streeton J).
It is well established that applying for registration of a trade mark brings with it a presumption that an applicant intends to use the trade mark.[5] The onus is on an opponent to displace this presumption by making out a prima facie case that the applicant lacked the requisite intention at the filing date.[6] If an opponent makes out a prima facie case, the evidentiary onus shifts to the applicant to show its intention to use the trade mark at the filing date.[7]
[5] Ibid [197].
[6] Aston v Harlee Manufacturing Co [1980] HCA 47.
[7] Suyen Corp v Americana International Ltd (n 4) [190].
In support of the prima facie case, the Opponent submits that at the filing date the Applicant did not intend to use the Trade Mark, rather Mr. Hague filed the trade mark application to frustrate the commercial plans of the Opponent and to provide leverage for the sale of the Applicant’s domain name.
The Opponent’s evidence (described above) demonstrates the following:
·At the filing date, the parties were negotiating the possible sale of the Applicant’s domain name to the Opponent. The identifying feature of the domain name and the Trade Mark is CODEBREWERY.
·Mr. Hague filed the trade mark application some 44 minutes after sending an email asking Mr. Muscat to make his best offer in relation to the purchase of the Applicant’s domain name. Negotiations between the parties continued after the filing date.
·On the same day as filing the Trade Mark, Mr. Hague declined Mr. Muscat’s offer of potentially taking on contract work from the Opponent.
·At the filing date, the Applicant was aware that the Opponent was rebranding its business to CODE BREWERY and that they were ‘quite far down the path of rebranding’ and keen to launch the brand by the end of August 2017.
·At no point in the email correspondence did Mr. Hague state that he had applied for the Trade Mark or that he was using, or had an intention to use, CODEBREWERY as a trade mark. This is consistent with Mr. Muscat’s recollection of the content of the telephone conversation between himself and Mr. Hague (set out above at [27]).
I do note in the email of 18 August 2017 that Mr. Hague states that he is using the domain name for a product in stealth. Domain names and trade marks are different genus of intellectual property. The use of a domain name does not necessarily amount to use as a trade mark (see below for further discussion).
·On 24 January 2018 the landing page of the website associated with the Applicant’s domain name did not show use of CODEBREWERY as a trade mark. The only reference to CODEBREWERY on that webpage is in the domain name. Such use can amount to use as a trade mark if the website contains advertising material that promotes a trader’s goods or services.[8] In this instance, on 24 January 2018 the website makes no reference to any goods or services; the content is essentially a ‘watch this space’ announcement.
[8] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2015] FCA 554 [187] (Rangiah J).
In isolation, none of these circumstances are sufficient to infer that the Applicant lacked the requisite intention at the filing date. However, collectively, these circumstances place Mr. Hague’s intentions at the time of filing the application ‘under sufficient cloud as to require a plain and direct response’.[9]
[9] Chiem v Republic Consulting Pty Ltd [2008] ATMO 20 [51].
In Suyen Corp v Americana International Ltd, Dodds Streeton J noted that where an opponent establishes:
a prima facie case for lack of intention in proceedings under s 59, the evidentiary onus may shift to an applicant who, although on notice that its intention is challenged, fails to respond to the opponent’s evidence.[10]
In the current matter, the Applicant has been on notice that its intention was in issue since receiving the SGP. In the SGP, there is no ambiguity in the particularisation of the s 59 ground of opposition; it plainly sets out the Opponent’s view that the trade mark application was filed without any intention to use the Trade Mark and provides reasons for that view.
[10] [2010] FCA 638 [190].
There is no evidence in answer, or material filed out of time, which I may consider in this matter. As set out at the beginning of this decision, the Applicant’s request for an extension of time to file evidence in answer was refused and the Applicant did not seek a hearing on that refusal. Additionally, the Applicant did not request that the Applicant’s Declaration be considered pursuant to reg. 21.15(4) of the Regulations. There may be reasons for the Applicant’s chosen path. Nonetheless, the Applicant, through its actions, has elected not to rely on the Applicant’s Declaration and must accept ‘the consequences of that gamble’.[11]
[11] Paul Francis Cox v The Coca Cola Company [1992] ATMO 38.
I am satisfied that the Opponent has made out a prima facie case that Mr. Hague lacked the requisite intention at the time of filing the trade mark application. Consequently, the onus has shifted, and the Applicant must show that, at the filing date, it did have the requisite intention to use the Trade Mark. The Applicant has not done so.
The ground of opposition under s 59 of the Act has been established.
Decision
Section 55 of the Act relevantly provides:
(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.
The Opponent has established the ground of opposition under s 59 of the Act. Accordingly, I refuse to register trade mark number 1867097.
Costs
The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Applicant according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995.
Katrina Brown
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
25 May 2020
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