Re: Opposition by Mayfair Finance Group Pty Ltd to an application under section 92 of the Act by Leowalt Pty Ltd for removal of trade mark number 1390246 (36) - Mayfair and Device in the name of Mayfair Finance..

[2020] ATMO 88

TRADE MARKS ACT 1995

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

Re:Opposition by Mayfair Finance Group Pty Ltd to an application under section 92 of the Act by LEOWALT PTY LTD for removal of trade mark number 1390246 (36) – Mayfair and DEVICE- in the name of Mayfair Finance Group Pty Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: Griffith Hack Applicant: Spruson & Ferguson
Decision:	2020 ATMO 88 Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) application for removal - Removal Opponent’s evidence does not show use of the Trade Mark during the relevant period or obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register

Background

1. This decision is pursuant to an application made on 30 October 2017 under s 92(4)(b) of the Trade Marks Act 1995 (‘Act’) by LEOWALT PTY LTD[1] (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of all of the services for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

   [1] The Application filed on 30 October 2017 referred to the Applicant as LEOWALY PTY LTD.  On 12 February 2018 the name of the Applicant was amended to LEOWALT PTY LTD, with the Applicant’s representative noting that the use of LEOWALY was a typographical error, with the person preparing the Application for removal typing the letter ‘y’ instead of ‘t’.

Registration No.	1390246
Lodgement date	21 October 2010
Services	Class 36: Financial services, advisory services in relation to superannuation, insurance services, financial analysis and consulting services, loan financing and investment services, managed funds services, management for investments, real estate investment services, retirement planning, debt management, assets protection, personal and business risk cover, estate planning, home loans, commercial loans, car and equipment leasing and investment loans (‘Registered Services’)
Owner	Mayfair Finance Group Pty Ltd
Trade Mark	(‘Trade Mark’)

1. Mayfair Finance Group Pty Ltd (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 3 January 2018 and a Statement of Grounds and Particulars (‘SGP’) on 31 January 2018.  The Applicant filed a Notice of Intention to Defend on 14 March 2018.

2. The Opponent subsequently filed evidence in support of its opposition to removal (‘EIS’) and the Applicant filed evidence in answer (‘EIA’), each of which will be discussed in more detail below.  The Opponent did not file any evidence in reply.

3. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  Neither party requested a hearing and on 15 February 2019 a letter was sent to the parties providing them with an opportunity to file any written submissions in this matter.  The Opponent filed written submissions on 3 June 2019 (‘Opponent’s Submissions’).  The Applicant did not file any submissions.

4. I note that paragraph 68 of the Opponent’s Submissions purports to refer to additional evidence of use and invites me to investigate the Opponent’s purported use through LinkedIn and/or the Wayback Machine.  I have disregarded the additional evidence in paragraph 68 as having not been filed in proper form and note that it is not the role of a Hearing Officer to make their own enquiries as to the veracity of statements made by an Opponent.  

5. I am a Delegate of the Registrar and the matter has been allocated to me to decide, which I have done, on the basis of the following relevant material:

   ·The Application for Removal;

   ·The Notice of Intention to Oppose and SGP;

   ·The Opponent’s Evidence in Support;

   ·The Applicant’s Evidence in Answer; and

   ·The Opponent’s Submissions.

   The Relevant Provisions

6. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 of the Act 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:

      (a)  …

   (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.

7. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 30 September 2017 (‘relevant period’).

8. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application,[2] and I confirm that five years since filing the application have in fact passed.

   [2] Per s 93(2) of the Act.

9. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 of the Act which provides, relevantly to this matter:

   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:

   (a) …
   (b) …
   (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
    (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

   (i)  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 the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
   (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; 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.

10. I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[3]

    [3] Pfizer Products Inc. v Karam [2006] FCA 1663 and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

11. In accordance with s 101 the Registrar may decide to remove the Trade Mark from the Register for all or some of the goods identified in the application for removal, 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.

12. I further note 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 under s 92(4)(b),[4] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, overwhelmingly convincing proof’.[5]

    [4] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17].

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

    Opponent’s Evidence

13. The Opponent’s evidence in this matter consists of a declaration made on 19 June 2018 by Paul Antos, director of the Opponent, with Exhibits PA1 –PA6 (‘Antos Declaration’).    

14. The Antos Declaration conveys the following information:

    ·The Opponent was established in 1989. A related company, Mayfair Wealth Management Pty Ltd was formed on 13 June 2006 and is authorised to use the Trade Mark.

    ·The Trade Mark was first used by the Opponent in 2010 and has been continuously used in respect of the Applicant’s Services.  It has been used through e-mail, printed material and marketing material, including the Opponent’s sponsorship of Haileybury College and Cheltenham Bowls club.  

15. The Antos Declaration contains the following material as exhibits:

    ·Emails from the declarant, some of which are in the relevant period, that display as part of the e-mail signature, a slightly varied form of the Trade Mark with additional words such as ‘wealth management’ and ‘finance group’ along with the smaller words ‘Strategies Advice Solutions’.  Many of the e-mails are heavily redacted and as such it is difficult to discern what services are being offered (other than speculating based on unredacted subject lines such as ‘Formal Approval’ or ‘RE: Your MLC Insurance policies’.

    ·The Antos Declaration contains one unredacted e-mail dated 22 June 2016 which encloses a document that appears to be a formal approval of a loan which details the loan splits, fees and rates. This e-mail features a slightly varied form of the Trade Mark and the words ‘Finance Group, Strategies Advice Solutions’

    ·Advertising material featuring the Trade Mark or the Trade Mark with the additional words referred to above.  The advertising material is either undated or dated outside the relevant period, other than what is said to be an image of a Christmas card that features the Trade Mark with the additional words ‘Wealth Management, Strategies Advice Solutions’ that is said to have been sent in 2015.

    ·A ‘5 Minute Financial Health Check’ that is a self-assessment questionnaire dated 18 February 2017 that features the Trade Mark with the additional words ‘Wealth Management, Strategies Advice Solutions’.

    ·An undated document, said to have been provided to clients in the relevant period that features the Trade Mark with the additional words ‘Wealth Management, Strategies Advice Solutions’. It describes the financial advice services offered by Mayfair Wealth Management Pty Ltd.

16. I note that the Antos Declaration does not provide any evidence of invoices, payments or customer testimonials showing the provision of the Registered Services under the Trade Mark during the relevant period.  Nor, other then asserting that it is a related entity, does it provide any evidence of the connection between the Opponent and Mayfair Wealth Management Pty Ltd.

    Applicant’s Evidence

17. The Opponent’s evidence in this matter consists of a declaration made on 25 September 2018 by Andrew Rowlands, director of the Applicant, with Annexures A-C (‘Rowlands Declaration’).    

18. The Rowlands Declaration contains submissions to the effect that the Antos Declaration does not show use of the Trade Mark for the Registered Services in the relevant period. In particular the Rowlands Declaration states that the Opponent’s stated website at does not exist and redirects to the website which, according to the Internet Archive, did not display the Trade Mark during the relevant period.  Equally the Opponent’s business address is occupied by a third party entity that does not use the Trade Mark.

    Discussion

19. To successfully oppose the Application the Opponent must establish that it has used the Trade Mark pursuant to s 100 of the Act (either through use or circumstances that were an obstacle to use in the relevant period). Use of the Trade Mark by another person who was authorised by the Opponent is taken to be use of the Trade Mark by the Opponent[6]. 

    [6] s 7(3) of the Act.

20. In the event that the Opponent fails to establish such use, the Registrar may exercise her discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register.

21. The Opponent, in its written submissions, submits that this case should be dismissed because it was filed in the name of LEOWALY PTY LTD, not the Applicant.  In support of this it relies on the case of Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham Global’)[7], which involved the issue of whether a trade mark application filed by an entity that was not the owner of the trade mark could be rectified by subsequently assigning the application to the valid owner of the mark.  The Opponent’s submissions on this point are misguided as Pham Global does not, and has never been found to, apply to the question of whether the name of an applicant for removal can be amended, which is governed by s 66 of the Act. The Application for Removal was filed by the Applicant however due to a typographical error the name of the Applicant was incorrectly stated on the application document. This was subsequently amended and I am satisfied that this office had the power under s 66 of the Act to allow an amendment to correct this clerical error.

    [7] [2017] FCAFC 83.

    Use of the Trade Mark in the relevant period

22. The EIS showing use of the Trade Mark during the relevant period is limited and I analyse it in the following manner.

23. There is evidence of the use of a mark that features the Trade Mark with the additional words ‘Wealth Management, Strategies Advice Solutions’.  Based on the evidence before me, and in particular Exhibit PA6 to the Antos Declaration which explicitly refers to Mayfair Wealth Management Pty Ltd, it appears likely on the balance of probabilities that this mark was used in respect of financial advice services offered by Mayfair Wealth Management Pty Ltd, not the Opponent.  

24. While use of the Trade Mark by another person who was authorised by the Opponent is taken to be use of the Trade Mark by the Opponent under s 8 of the Act, authorised use requires use under the control of the trade mark owner. The Opponent has, aside from asserting that Mayfair Wealth Management Pty Ltd is a related entity and that Mayfair Wealth is authorized to use the Trade Mark, provided no evidence establishing the relationship between the Opponent and Mayfair Wealth Management Pty Ltd and in the absence of such evidence I am unable to find that the use of the Trade Mark with the additional words ‘Wealth Management, Strategies Advice Solutions’ was use of the Trade Mark by the Opponent.

25. There is also evidence of use of a mark containing the Trade Mark along with the words ‘Finance Group’ along with the smaller words ‘Strategies Advice Solutions’ (‘Finance Mark’). As such the question is whether the use of the Finance Mark during the relevant period is use of the Trade Mark under s 100(3)(a) of the Act. Section 7(1) of the Act provides:

    Use of trade mark

    If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark. [emphasis added]

26. The test to be applied here is whether there is substantial identity between the Trade Mark and the Finance Mark[8] with the test for substantial identity being set out below:

    In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[9]

    [8] Link Recruitment Pty Ltd v Link Employment And Training Inc (2006) 69 IPR 614, 619 [21]-[22].

    [9] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407, 414.

27. To assist the side by side comparison I have reproduced the Trade Mark and the Finance Mark below:

28. While there are differences between the respective trade marks, principally the addition of ‘Finance Group strategies advice solution’, I accept the Opponent’s Submissions on this point and find that the essential features of the respective trade marks, being the logo and the use of the word ‘Mayfair’ are identical.  The additions and alterations are either de minimis (the slightly different sizing of Mayfair and the addition of a small horizontal line) or wholly descriptive of the Applicant’s Services and thus their addition does not substantially affect the identity of the trade mark. 

29. The next step to be undertaken is to look at the evidence of use of the Finance Mark and determine whether this establishes use by the Opponent for the Registered Services.  I note here that the onus of rebutting an allegation of non-use lies with the Opponent.  The EIS shows three uses of the Finance Mark for e-mails during the relevant period.  Two of them are redacted and/or contain unclear subject lines such that I cannot determine what services are provided through these e-mails.  The Opponent’s Submissions are that those e-mails clearly show the use of the Finance Mark for particular services.  I do not agree and consider at any attempt to reach a conclusion that a service is being provided from an e-mail subject line is purely speculative.

30. The final relevant e-mail is an e-mail dated 22 June 2016 from Paul Antos to a third party with the title ‘Formal Approval’.  This e-mail encloses a document which is described as formal approval of a loan detailing loan splits, fees and rates.  I note that if a single act of use is relied upon then it should be established by ‘if not conclusive proof, overwhelmingly convincing proof’.[10]  This use does not meet that standard.  This single e-mail does not establish the entity providing the financial services (whether it is the Opponent or Paul Antos, who is the named representative), it does not establish precisely what financial services are being provided (be it general advice, loan advice, loan broking, investment advice), it does not establish who was provided with those services (i.e. a third party in Australia) or that such services were provided in trade or commerce (the e-mail was not supported by any evidence of invoices or payments for those services).  

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

31. The burden of proof to show use of a trade mark falls squarely on the shoulders of an opponent for the simple reason that, in most cases, were an opponent actively using the mark it should be relatively easy to provide evidence demonstrating use. In the case of this Opponent, that purports to operate a financial advice practice, one would expect to see evidence of extensive use of the Trade Mark in e-mails, dated correspondence, marketing material used in the relevant period, invoices or receipts. In the event that the use of the Trade Mark was by an entity controlled by the Opponent, one would expect the Opponent (who is legally represented) to provide evidence establishing authorised use. The sum total of the Opponent’s evidence of use is a single e-mail that does not clearly set out what services are being provided under the Trade Mark and to whom. The EIS has fallen well short of demonstrating that the Opponent used the Trade Mark during the relevant period. I find that the Opponent has failed to satisfy the onus under s 100(3)(a) of the Act.

    Obstacles to use

1. The Opponent does not formally submit that there have been any matters that amount to an obstacle to the use of the Trade Mark for the Registered Services in the relevant period, pursuant to s 100(3)(c) of the Act and in the interests of completeness I note that I have been unable to identify any such obstacles. As there is no obstacle to use of the Trade Mark, it is therefore necessary to consider whether the Registrar should exercise her discretion to allow the Registered Services to remain on the Register.

   Registrar’s Discretion

2. As noted in Shanahan’s Australian Law of Trade Marks and Passing Off the policy of the Act is to facilitate the removal of an unused trade mark, and the public interest in the integrity of the Register will generally demand the removal of an unused trade mark.[11] However, as indicated at paragraph 11, above, s 101(3) provides the Registrar with a discretion, which, in the words of Bennett J, is:

   a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court [or Registrar] is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.[12]

   Her Honour also noted:

   By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. …

   There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account.[13]

   [11] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2016 Thomson Reuters, [70.2505].

   [12] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [167].

   [13] Ibid [171]-[172].

3. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated:

   Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[14] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register.[15] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[16]

   [14] Kowa Co Ltd v Organon [2005] FCA 1282, [92].

   [15] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

   [16] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210].

4. Factors that have been found relevant to the consideration of whether to exercise the discretion include:

   ·There had been no abandonment of the trade mark;

   ·The registered proprietor of the mark still had a residual reputation in the mark;

   ·There had been sales by the registered proprietor of goods for which removal was sought since the relevant period ended;

   ·The applicant 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;

   ·The registered proprietor was not aware of the applicant’s sales under the mark.[17]

   [17] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135 at [169] citing E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 1005 [202]-[203].

5. In the present case, the Opponent submitted that I should exercise the discretion not to remove the Trade Mark in respect of the Registered Services on the basis that the Trade Mark Mark had been used in respect of the Registered Services before, during and since the relevant period and hence the Opponent had a significant commercial interest in the Trade Mark being retained on the Register.

6. I am not persuaded by the Opponent’s submissions that this is an appropriate case to exercise the discretion.  The evidence of use by the Opponent of the Trade Mark outside the Relevant Period is limited, and I am unpersuaded that the Trade Mark had or has subsequently acquired such a reputation that consumer confusion would arise were the Trade Mark to be removed from the Register.  Given the lack of any evidence of reputation and the limited evidence of use of the Trade Mark on the Registered Services  before, during or after the relevant period, the Opponent’s private commercial interest is insufficient to outweigh the public interest of the integrity of the Register.  In those circumstances I am not prepared to exercise the Registrar’s discretion.

   Decision

7. I decide that the Opponent has not established its opposition to removal and the Trade Mark should be removed from the Register in respect of all of the services for which it is registered.

8. Accordingly, I direct that registration 1390246 be removed from the Register one month from the date of this decision.  If the Registrar is served with a notice of appeal before then I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.

   Costs

9. 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 no. 1390246 be awarded against the Opponent in accordance with Schedule 8 of the Trade Marks Regulations 1995.

   Nicholas Smith
   Hearing Officer
   Hearings and Oppositions
   26 May 2020