Re: Opposition by Jagen Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Index Fund Advisors Pty Ltd to remove trade mark number 1067649 (class 36) – SCIENTIA CAPITAL – in the name of...

[2020] ATMO 30

TRADE MARKS ACT 1995

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

Re:Opposition by Jagen Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Index Fund Advisors Pty Ltd to remove trade mark number 1067649 (class 36) – SCIENTIA CAPITAL – in the name of Jagen Pty Ltd

Delegate:

Katrina Brown

Representation:

Opponent: No submissions

Applicant: Maria Simpson of Valia IP Patent Attorneys

Decision:

2020 ATMO 30

Trade Marks Act 1995 (Cth) – application under section 92 – use by removal opponent or authorised user not shown – discretion not exercised – trade mark to be removed from the Register.

Background

1. Jagen Pty Ltd (‘the Removal Opponent’) is the owner of the following trade mark registration:

Registration No:  1067649

Trade Mark:        SCIENTIA CAPITAL (‘the Trade Mark’)

Filing Date:  2 August 2005

Registered Services:  Class 36: Financial services, including banking, credit and investment services; custodial services and administration; 

financial management including property trust management; 

funds management services (‘the Registered Services’)

1. On 14 November 2017 Index Fund Advisors Pty Ltd (‘the Removal Applicant’) filed an application pursuant to s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘the Act’) seeking removal of the Trade Mark from the Trade Mark Register (‘the Register’). The removal application was made in respect of all of the Registered Services; that is complete removal of the Trade Mark from the Register.

2. The Removal Opponent filed a Notice of Intention to Oppose the removal application on 12 February 2018, followed by a Statement of Grounds and Particulars on 16 March 2018.

3. The Removal Applicant filed a Notice of Intention to Defend the removal application on 13 June 2018.

4. In due course the Removal Opponent filed the following declaration as evidence in support:

• Declaration of Lawrence Gozlan (employee of the Removal Opponent and Director of Scientia Capital Pty Ltd) made on 22 March 2018 with Exhibits LG-1 to LG-2 (‘Gozlan Declaration’).

1. The Removal Applicant filed the following declaration as evidence in answer:

• Declaration of Nigel Gower Baker (Director of Removal Applicant) made on 24 September 2018 with Appendices A to F (‘Baker Declaration’).

1. The Removal Opponent did not file evidence in reply. Once the period for filing evidence in reply had expired, both parties were invited to request a hearing. Neither party made such a request. On 18 January 2019 both parties were informed via letter that the matter would be decided based on the material properly filed in the opposition proceeding. The parties were also invited to file any written submissions within one month of the date of that letter.

2. The Removal Applicant filed written submissions on 15 February 2019. The Removal Opponent did not file written submissions.

3. As a delegate of the Registrar of Trade Marks, I will now decide this matter.

The relevant provisions

1. Part 9 of the Act deals with removal of trade marks from the Register due to non-use.

2. Section 92(4)(b) of the Act provides:

   (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.

3. The Removal Applicant alleges that the Removal Opponent, or an authorised user as contemplated by ss 7(3) and 8 of the Act, did not use the Trade Mark in the course of trade in Australia at any time in the three year period ending on 14 October 2017 (‘the Relevant Period’).

4. Pursuant to s 100(1)(c) of the Act, the Removal Opponent bears the onus of rebutting an allegation made under s 92(4)(b) by establishing that it, or an authorised user, used the Trade Mark in the course of trade in Australia during the Relevant Period in relation to the Registered Services.

5. The relevant standard of proof is on the balance of probabilities.[1] As the Registrar’s delegate observed in Courier Luggage Pty Ltd v Wenger SA Inc:[2]

   The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co [1982] FSR 72. A single bona fide use of the trade mark during the non-use period may be sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; (2001) 51 IPR 149 at [17]. However, Wilberforce J, in Nodoz Trade Mark (1962) RPC 1 (Nodoz) at 7, said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof.”

   The tribunal may not be persuaded by evidence that is solely from the internal files of the opponent: Nodoz, supra; or of a circumstantial nature: Trina Trade Mark [1977] RPC 131; although one invoice, if genuine, may suffice: Geo W McPherson v Remington (1999) 47 IPR 636.

   [1] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [132].

   [2] [2015] ATMO 10 [8].

6. In accordance with s 101 of the Act, if the requisite use is not established I may decide to remove the Trade Mark from the Register in respect of any or all of the services identified in the removal application, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark from the Register.

The Removal Opponent’s evidence

1. Mr. Gozlan declares that he has been an employee of ‘Jagen’, who he identifies as the registered owner of the Trade Mark, since approximately 2005. During this time Mr. Gozlan established a life sciences fund in relation to which the Trade Mark is used.

2. To aid in the establishment of an independent life sciences fund, a separate entity, Scientia Capital Pty Ltd, was incorporated in May 2007. Mr. Gozlan declares that the ‘shareholding in Scientia Capital Pty Ltd is split equally between Jagen and a corporate vehicle associated with me’.[3] Exhibit LG-1 to the Gozlan Declaration consists of the results of a search of the Australian Securities and Investment Commission’s (‘ASIC’) database for ‘Scientia Capital Pty Ltd’. These results show that the shareholding in Scientia Capital Pty Ltd is split equally between Jagen Nominees Pty Ltd and Montoya Pty Ltd.

   [3] Gozlan Declaration [7].

3. Mr. Gozlan declares that he has continuously used the Trade Mark on Jagen’s behalf since ‘the filing date of the application’[4] and that the Trade Mark had been used in the Relevant Period in connection with the Registered Services. Furthermore, he states that all of his activities in relation to the Trade Mark are under the control and direction of Jagen.

   [4] It is unclear whether Mr. Gozlan is referring to the filing date of the application for registration of the Trade Mark or the filing date of the application to remove the Trade Mark from the Register.

4. Exhibit LG-2 to the Gozlan Declaration consists of a Powerpoint® presentation (‘the Presentation’) in relation to investing in life sciences and the healthcare industry. The front page contains the Trade Mark with a device and the date 31 August 2017. The Trade Mark and device are on the top left hand corner of each subsequent page of the Presentation. Mr. Gozlan declares that he gave the Presentation to Michael Sistenich, who he identifies as a ‘client of the business’, in Sydney on 31 August 2017.  

The Removal Applicant’s evidence

1. Mr. Baker declares that he conducted various internet-based searches as a means of ascertaining whether the Removal Opponent was using the Trade Mark. The results of these searches form the appendices to the Baker Declaration:

• Appendix A – copy of the landing page for the website ‘ which consists of the words ‘Jagen Pty Ltd, Melbourne based family office’.

• Appendix B – search for the website ‘ which states that the IP address could not be found.

• Appendices C and D – results of searches of the Australian Financial Services Licensee Register for ‘Jagen’ and ‘Scientia’. There are no records for either search term. Mr. Baker states that all entities offering financial advice must have an Australian Financial Services Licence.

• Appendices E and F – results of searches for ‘Jagen’ and ‘Scientia’ in the Member Directory on the website of the Australian Private Equity & Venture Capital Association Limited. The results are not visible on the appendices however Mr. Baker declares that the searches yielded no results.

1. Mr. Baker declares that, based on the results of these internet-based searches, he was confident that the Removal Opponent was not using the Trade Mark in course of trade in Australia in respect of financial services.

Discussion and reasons

1. As this is a removal matter, it is crucial that the Removal Opponent demonstrates that it, or an authorised user, used the Trade Mark in good faith in Australia in relation to the Registered Services during the Relevant Period.

2. Bald statements such as those quoted in [18] are not, in and of themselves, sufficient to establish that the Trade Mark was used by the Removal Opponent, or an authorised user, within the Relevant Period.

3. The Presentation is the only example provided to demonstrate use of the Trade Mark by the Removal Opponent, or an authorised user, within the Relevant Period. As stated above, if a single act of use is relied upon then it should be established by ‘if not conclusive proof, overwhelmingly convincing proof’.[5]

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

4. As detailed in [19] of this decision, the Presentation contains the Trade Mark (albeit in close proximity to a device), it is dated within the Relevant Period and it is in relation to investment and fund management services which are a subset of the Registered Services; all of which are in the Removal Opponent’s favour in rebutting the allegation of non-use. However, a hurdle remains for the Removal Opponent, namely whether the Presentation be said to be use by the Removal Opponent or an authorised user.

5. The Presentation makes no reference to the Removal Opponent, in fact it makes no reference to any entity. As such, the supporting information provided in the Gozlan Declaration has an important bearing on my consideration of whether the Presentation is use by the Removal Opponent or an authorised user.

6. In [13] of the Gozlan Declaration, Mr. Gozlan declares that the Presentation was given by him to ‘a client of the business’. However, he does not explain what he means by ‘the business’. This omission is significant because the Gozlan Declaration refers to multiple corporate entities, any of which could be ‘the business’.  

7. In other parts of his declaration, Mr. Gozlan states that ‘he is an employee of Jagen, the registered owner of the trade mark’[6] and that all his activities in connection with the Trade Mark are under ‘the control and direction of Jagen’[7]. From these statements, one might assume that when Mr. Gozlan says that the Presentation was given by him, it was done so either as an employee of the Removal Opponent or as a user of the Trade Mark authorised by the Removal Opponent.

   [6] Gozlan Declaration [1].

   [7] Ibid [10].

8. However, I am not willing to make that assumption in this matter because ‘Jagen’ is used in the Gozlan Declaration to refer to at least two different entities. In [1] ‘Jagen’ is used to refer to the Removal Opponent. In [7] ‘Jagen’ is used to refer to the equal shareholder in Scientia Capital Pty Ltd. However, the Removal Opponent and the shareholder in Scientia Capital Pty Ltd are different entities. The former is Jagen Pty Ltd ACN 005 137 851. The latter, as established by Exhibit LG-1 to the Gozlan Declaration, is Jagen Nominees Pty Ltd ACN 073 513 738.

9. This conflation of multiple entities into ‘Jagen’ infects vital statements within the Gozlan Declaration. For example, when Mr. Gozlan states in [10] that he is ‘an employee of Jagen’s and all of [his] activities in connection with and associated with the Trade Mark are under the control and direction of Jagen’, it is not clear to me whether Mr. Gozlan is referring to ‘Jagen’ the Removal Opponent, or ‘Jagen’ the shareholder in Scientia Capital Pty Ltd. The resulting ambiguity is such that I cannot be satisfied that the Presentation was use of the Trade Mark by the Removal Opponent or under the control and direction of the Removal Opponent.

10. Furthermore, if the Presentation was use of the Trade Mark by an employee of Jagen Nominees Pty Ltd, I have not been provided sufficient information to determine whether that corporate entity used the Trade Mark under the control of the Removal Opponent.[8]

    [8] Trade Marks Act 1995 (Cth) s 8(2).

11. For these reasons, I am not satisfied that the Presentation is ‘overwhelmingly convincing proof’ that the Removal Opponent, or an authorised user, used the Trade Mark in the Relevant Period.

12. For the sake of completeness, I note that there is no evidence before me to suggest that there was an obstacle to use of the Trade Mark in the Relevant Period.

13. The ground for removal under s 92(4)(b) of the Act has been established.

Discretion

1. Section 101 relevantly provides:

   (3) If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

   (4) Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:

   (a) similar goods or closely related services; or

   (b) similar services or closely related goods;

   to those to which the application relates. 

2. In this matter, the question to be asked is whether it is reasonable not to remove the Trade Mark, even though the Removal Opponent has not satisfied me that the Trade Mark was used by the registered owner, or an authorised user, during the Relevant Period.[9]

   [9] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8 [28].

3. The Removal Opponent bears the onus of satisfying me that it is reasonable not to remove the Trade Mark.[10]

   [10] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380 [273].

4. In Tivo Inc v Vivo International Corporation Pty Ltd Dodds-Streeton J summarised some relevant considerations for the exercise of the discretion:

   In Austin, the Full Court affirmed that Flick J’s view that while public interest, particularly in the integrity of the Register, was the guiding principle behind the discretion, the private commercial interests of parties could be taken into account and the interests of both consumers and traders must be recognised (at [33]-[34]).

   In E&J Gallo, Flick J identified (at [202]) the following factors additional to that in s 101(4) which, while not exhaustive, were also relevant to the exercise of the discretion: whether there has been no abandonment of the trade mark; whether the registered proprietor still had a residual reputation in the mark; whether there had been sales by the registered proprietor in relation to the goods for which removal was sought since the relevant period ended; whether the applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark; and whether the registered proprietors were aware of the applicants’ sales under the mark.[11]

   [11] [2012] FCA 252 [467].

5. Neither party made submissions in respect of the discretion. Notably there is nothing before me to suggest that the Removal Opponent, or an authorised user, used the Trade Mark after the Relevant Period or that the Trade Mark has ever been used in respect of similar services or closely related goods.

6. In the absence of submissions or persuasive evidence, I am not be satisfied that it is reasonable to exercise the Registrar’s discretion.

Decision

1. The ground for removal under s 92(4)(b) of the Act has been established and I am not satisfied that it is reasonable to exercise my discretion to allow the Trade Mark to remain on the Register.

2. I direct that, one month from the date of this decision, registration number 1067649 be removed from the Register.

3. If the Registrar is served with a notice of appeal within the relevant timeframe, the disposition of this removal application will instead be subject to the decision made by the Court.

Costs

1. Both parties have requested that costs be awarded. As the Removal Applicant has been successful, I award costs against the Removal Opponent in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Katrina Brown

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

28 February 2020