Re: Opposition by Rochelle Lee Bogle to an application under section 92 of the Act by Hipster Holdings Pty Ltd for removal of trade mark number 1795606 (43) - Miss Chats in the name of Rochelle Lee Bogle

[2020] ATMO 80

TRADE MARKS ACT 1995

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

Re:Opposition by Rochelle Lee Bogle to an application under section 92 of the Act by Hipster Holdings Pty Ltd for removal of trade mark number 1795606 (43) – Miss Chats - in the name of Rochelle Lee Bogle

Delegate:	Nicholas Smith
Representation:	Opponent: Self-Represented Applicant: Self-Represented
Decision:	2020 ATMO 80 Trade Marks Act 1995 (Cth) – section 96 opposition to s 92(4)(a) application for removal – intention to use inherent in filing of Trade Mark application – Opposition successful – opponent asserts its intention at the filing date to use the Trade Mark for the goods –Trade Mark to remain on Register

Background

1. This decision is pursuant to an application made on 16 November 2017 under s 92(4)(a) of the Trade Marks Act 1995 (‘Act’) by Hipster Holdings Pty Ltd (‘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.

Registration No.	1795606
Lodgement date	9 September 2016
Goods	Class 43: Services for providing food and drink; temporary accommodation (‘Registered Services’)
Owner	Rochelle Lee Bogle
Trade Mark	Miss Chats (‘Trade Mark’)

1. Rochelle Lee Bogle (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 5 March 2018 and a Statement of Grounds and Particulars (‘SGP’) (subsequently rectified by this office on 11 May 2018) on the same day.  The Applicant filed a Notice of Intention to Defend on 15 June 2018.

2. The Opponent subsequently filed evidence in support of its opposition to removal (‘EIS’) which will be discussed in more detail below.  The Applicant chose not to file any evidence in this matter.

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 14 February 2019 a letter was sent to the parties providing them with an opportunity to file any written submissions in this matter.  Neither party filed any submissions.    

4. 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; and

   ·The Opponent’s Evidence in Support.

   The Relevant Provisions

5. Part 9 of the Act deals with removal of trade marks from the Register for 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)  that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

       (i)  to use the trade mark in Australia; or

   (ii)  to authorise the use of the trade mark in Australia; or

   (iii)  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 to which the non-use application relates and that the registered owner:

   (iv)  has not used the trade mark in Australia; or

   (v)  has not used the trade mark in good faith in Australia;

   in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed;

6. 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)  any allegation made under paragraph 92(4)(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

   (i)  to use the trade mark in Australia; or
   (ii)  to authorise the use of the trade mark in Australia; or

   (iii)  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 to which the opposed application relates ( relevant goods and/or services ); or
   (b)  any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on 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; or

   […]

   (3) For the purposes of paragraph 1(b), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time before 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

   [...]

7. I proceed on the basis that the standard of proof is the ordinary civil standard of the balance of probabilities.[1]

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

8. In accordance with s 101, if a ground for removal is established, the Registrar may decide to remove the Trade Mark 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.[2]

   [2] s 101(3) of the Act.

   Opponent’s Evidence

9. The Opponent’s evidence in support filed in this matter consists of a declaration made on 14 September 2018 by Rochelle Lee Bogle, the Opponent, (‘Bogle Declaration’).  It contains the following statements/evidence:

   ·The Trade Mark is currently being used by the Applicant, Hipster Holdings Pty Ltd and has been in use since December 2016.  The Opponent is a shareholder in the Applicant and there is currently a dispute between the respective shareholders regarding a shareholders agreement and a trade mark licensing agreement. 

   ·The Opponent designed a branding, beverage and hospitality business being a tea and salon offering under the brands Miss Chats and Miss Chatelaines Tea and Gin Salon.  She also arranged for the registration of the domain name <misschats.com.au> in 2015.

   Applicant’s Evidence

10. The Applicant did not provide any evidence in this matter.

    Discussion

11. Though the onus is, in terms of s 100 of the Act, on the Opponent in this matter, that onus is not particularly arduous. In Aston v Harlee Manufacturing Co[3] Fullagar J observed:

    […] the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on … a motion to expunge, the burden must rest on … the person aggrieved, of proving the absence of intention. Again, I do not think that “intention” in this connexion ought to be regarded as meaning an intention to use immediately or within any limited time.

    [3] [1960] HCA 47; (1960) 103 CLR 391; [1960] ALR 605; 34 ALJR 242, [21].

12. While this observation was made in proceedings under the Trade Marks Act 1955, where the onus was on ‘the person aggrieved’ (that is, an applicant for removal), the principle has been held to be sound under the Act. In Structureco Inc v Starite Distributors Pty Ltd[4] the Registrar’s delegate Mr Forno said:

    Although the opponent to removal does bear the initial onus, in accordance with the legislation, I think that, in the case of applications for removal under s.92(4)(a), where the primary allegation regards the state of mind of an applicant for registration about whether it intends to use a mark in good faith, then that onus is not high. I believe that it is so low that it can be overcome if the opponent or its agent states that it was the case that the applicant for registration had an intention to use the mark in good faith. The onus should then shift to the removal applicant to support its case - perhaps by the production of some evidence which might support a circumstantial case of a lack of good faith, or by some other means.

    [4] [2000] ATMO 31.

13. Wilcox J went further in Nikken Wellness Pty Ltd v van Voorst[5]:

    I do not think [the Opponent] bears any onus in relation to the application for removal. It is for the applicant for removal […] to persuade Court that the requirements of s 92(4)(a) are satisfied.

    [5] [2008] FCA 100; [2003] AIPC 91-904, [232]-[236].

14. While the Bogle Declaration asserts that the Trade Mark is in use (by the Applicant) and has been in use since December 2016, there is no documentary evidence provided showing an entity offering the Registered Services under the Trade Mark.  Rather what we have is a 2015 business plan, prepared by the Opponent for the opening of a tea and gin salon under the Trade Mark and an assertion, again without documentary support, that there is presently a business dispute between the Opponent and Applicant regarding a trade mark licensing agreement between the Opponent and the Applicant. In any case, if the asserted use by the Applicant was established this would not be determinative of the present dispute.

15. On the other hand, the Applicant has provided no evidence in this matter and no submissions.  Such evidence is critical in an application to remove a trade mark under s 94(2)(a), as the authorities above have noted the making of the application itself is regarded as prima facie evidence of intention to use.

16. Based on the limited evidence I have before me and strictly on the balance of probabilities, I am satisfied that at the relevant date the Opponent had intended to operate (or participate in the operation of) a business providing the Registered Services under the Trade Mark.  I reach this conclusion on the basis of the business plan annexed to the Bogle Declaration and the Opponent’s involvement in registering a corresponding domain name.  In the absence of any evidence to suggest otherwise, I find that the application to register the Trade Mark amounts to prima facie evidence that at the lodgement date the Opponent intended to use the Trade Mark, either directly or by licensing or assigning it to the Applicant.  I reach this conclusion with some reluctance the limited evidence of the nature of the relationship between the Applicant and the Opponent but in the absence of any evidence or submissions from either party regarding the relationship between the Applicant and Opponent, I have no basis to reach any other conclusion.

17. I find that the Opponent has satisfied its onus under s 100(1)(a) for the Registered Goods and has therefore established its opposition in relation to s 92(4)(a) of the Act.

    Decision

18. I decide that the Opponent has established its opposition to removal in respect of the Registered Goods.  

    Costs

19. The Opponent has been successful in relation to its opposition 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. 1795606 be awarded against the Applicant in accordance with Schedule 8 of the Trade Marks Regulations 1995.

    Nicholas Smith
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    12 May 2020