Re Oppositions by Fit n Fast Australia Pty Limited to registration of trade mark applications 1813479 (9, 16 41) Move Training and 1813480 (9, 16, 41) Move Coaching in the name of Hungry Spirit Pty Limited ATF The..

[2019] ATMO 90

TRADE MARKS ACT 1995

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

ReOppositions by Fit n Fast Australia Pty Limited to registration of trade mark applications 1813479 (9, 16 41) MOVE Training and 1813480 (9, 16, 41) MOVE Coaching in the name of Hungry Spirit Pty Limited ATF The Hungry Spirit Trust

Delegate:                 Robert Wilson

Representation:       Opponent: Halfords IP

Applicant: Norton Rose Fulbright

Decision:                   2019 ATMO 90

Trade Marks Act 1995 (Cth) - Section 52 opposition: s 44 considered – trade marks deceptively similar – s 44(4) considered - no authorised user – registration refused

Background

1. This decision concerns oppositions brought by Fit n Fast Australia Pty Limited (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade marks the subject of the applications detailed below in the name of Hungry Spirit Pty Limited ATF The Hungry Spirit Trust (‘the Applicant’):

Application Number:

1813479

Filing Date:

4 December 2016

Goods and Services:

Class 9: Computer programs relating to the training of personnel; Training guides in electronic format; Training guides in the form of a computer program; Training manuals in electronic format; Training manuals in the form of a computer program

Class 16: Booklets for use in conducting training workshops; Instruction manuals relating to training seminars; Manuals for business training courses; Printed training guides; Training booklets; Training guides in the form of printed matter; Training manuals in the form of printed matter; Training materials (other than apparatus)

Class 41: Adult training; Advisory services relating to training; Aerobics training services; Aircraft pilot training; Arranging and conducting of workshops (training); Arranging of exhibitions for training purposes; Association services being the provision of training and education to members of the association; Business training consultancy services; Business training services; Coaching (training); Commercial training services; Computer based training; Computer training; Computer training advisory services; Computerised training; Conducting training seminars; Conducting workshops (training); Health club services (health and fitness training); Industrial training; Life coaching services (training or education services); Lifestyle counselling and consultancy (training); Mentoring (education and training); Mentoring (training); Occupational health and safety services (education and training services); Organisation of training courses; Personal development training; Personal trainer services (fitness training); Physical fitness training services; Physical training services; Practical training (demonstration); Providing courses of training; Providing information, including online, about education, training, and cultural activities; Provision of training; Provision of training courses; Provision of training facilities; Setting of training standards; Sports training; Staff training services; Technical training; Training; Training consultancy

(‘the Applicant’s Goods and Services’)

Trade Mark:

MOVE Training

Endorsement:

Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.

Application Number:	1813480
Filing Date:	4 December 2016
Goods and Services:	The same as the Applicant’s Goods and Services
Trade Mark:	MOVE Coaching
Endorsement:	Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.

2. I will refer in the remainder of this decision to the two applications detailed above as ‘the applications’ and the trade marks collectively as ‘the Opposed Trade Marks’.

3. On 14 September 2017 the applications’ acceptances for possible registration were advertised in the Australian Official Journal of Trade Marks. The Opponent filed Notices of Intention to Oppose the registrations of the Applicant’s Trade Marks on 13 November 2017 and Statements of Grounds and Particulars on 13 December 2017. The Statements of Grounds and Particulars were essentially identical but for the trade mark details so for the sake of convenience I will refer to them simply as ‘the SGP’. The SGP nominated grounds of opposition under ss 42(b), 44 and 60 of the Act. The Applicant filed Notices of Intention to Defend on 17 January 2018.

Evidence

4. The Opponent did not file evidence in support of its oppositions.

5. The Applicant filed the same evidence in answer in respect of both oppositions, being:

·Declaration made on 6 August 2018 by Stephen Robert Walz with Annexures A to L (‘the Walz declaration’). Mr Walz is the sole director of the Applicant and the founder, sole director and chief executive officer of Move 4 Life Pty Ltd (‘Move 4 Life’).

6. The Opponent filed the same evidence in reply in respect of both oppositions being:

·Declaration made on 4 October 2018 by Anthony Gregory De Leede, a director of the Opponent, with Annexures ADL-1 and ADL-2 (‘the De Leede declaration’).

7. Once the time allowed for filing evidence had ended the Applicant requested an oral hearing.

8. I heard the matter on 16 April 2019 as a delegate of the Registrar of Trade Marks. Rebecca Brenikov of Norton Rose Fulbright appeared for the Applicant. Ms Brenikov’s oral submissions were supplemented by written submissions filed with IP Australia prior to the hearing. Prior to the hearing I was advised by the Opponent’s representative, Halford’s IP, that the Opponent did not intend to appear at the hearing, nor did it file written submissions.

The Opponent

9. The Opponent is the owner of the registered trade marks and applications detailed below (‘the Opponent’s Trade Marks’):

Trade Mark Number:

1740623 (Series) (Divisional Parent)

Priority Date:

10 December 2015

Services:

Class 41: Entertainment services; provision of fitness and/or exercise facilities; provision of fitness and/or exercise equipment

(‘the 623 services’)

Trade Marks:

MOVE 1; MOVE 10; MOVE 15; MOVE 20; MOVE 30; MOVE 40; MOVE 45; MOVE 50; MOVE 60; MOVE 90 (‘the Opponent’s 623 Series Trade Marks’)

Divisional Child:

1804165 (detailed below)

Status:

Registered/protected

Trade Mark Number:

1740948 (Divisional Parent)

Priority Date:

11 December 2015

Goods and services including:

Class 18: Backpacks, luggage, umbrellas …

Class 25: Clothing …

Class 27: Mats, yoga mats, shower mats, floor coverings …

Class 41: Entertainment services …

 (‘the 948 goods and services’)

Trade Mark:

MOVE123 (‘the Opponent’s 948 Trade Mark’)

Divisional Child:

1804168 (detailed below)

Status:

Registered/protected

Trade Mark Number:

1804165 (Series) (Divisional Child)

Priority Date:

10 December 2015 (Divisional priority date)

Goods and services including:

Class 9: Apparatus for recording, transmission or reproduction of sound or images; electronic publications; printed publications in electronically readable form …

Class 41: Education and training services …

(‘the 165 Goods and Services’)

Trade Mark:

MOVE 1; MOVE 10; MOVE 15; MOVE 20; MOVE 30; MOVE 40; MOVE 45; MOVE 50; MOVE 60; MOVE 90 (‘the Opponent’s 165 Series Trade Marks’)

Divisional Parent:

1740623 (detailed above)

Status:

Under examination - deferred

Trade Mark Number:

1804168 (Divisional child)

Priority Date:

11 December 2015 (Divisional priority date)

Goods and services including:

Class 9: Apparatus for recording, transmission or reproduction of sound or images; electronic publications; printed publications in electronically readable form …

Class 35: Retail, online retail and wholesale services …

Class 41: Education and training services

 (‘the 168 goods and services’)

Trade Mark:

MOVE123 (‘the Opponent’s 168 Trade Mark’)

Divisional Parent:

1740948 (detailed above)

Status:

Under examination - deferred

10.     According to the De Leede declaration:

The Opponent is particularly known for its MOVE123 fitness related goods and services, including providing video content related to fitness, wellness and exercise classes, which services have been marketed under the MOVE123 Mark since August, 2016. The MOVE Series Mark is also used in respect of video content of varying durations. The Opponent’s video content is distributed under the MOVE123 Mark and MOVE Series Mark through over 1500 clubs worldwide.

The Applicant

11.     According to the Walz declaration the Applicant was incorporated on 23 November 2007. In addition to the Opposed Trade Marks the Applicant is the owner of the following registered trade marks (‘the Applicant’s Registered Trade Marks’):

Trade Mark Number:

1040197

Priority Date:

3 February 2005

Services:

Class 41: Education and information services relating to the field of occupational health and safety; including arranging and conducting seminars, conferences, workshops; physical education and practical training services

(‘the MOVE @ WORK services’)

Trade Mark:

(‘the Applicant’s MOVE @ WORK Trade Mark’)

Trade Mark Number:

1049429

Priority Date:

6 April 2005

Goods and services:

Class 9: Apparatus for recording, storing or reproduction of sound or images; magnetic data media including video tapes and audio tapes; digital media including compact discs, CD ROMs, DVDs

Class 16: Printed matter including books, magazines, brochures, pamphlets, instructional leaflets, training manuals

Class 41: Physical education and training

 (‘the MOVE 4 LIFE goods and services’)

Trade Mark:

MOVE 4 LIFE  (‘the Applicant’s MOVE 4 LIFE Trade Mark’)

Trade Mark Number:

1242423

Priority Date:

30 May 2008

Goods and services including:

Class 9: Training manuals in electronic form; computer programs relating to the training of personnel …

Class 16: Printed training guides …

Class 41: Adult training; providing courses of training …

 (‘the MOVE goods and services’)

Trade Mark:

MOVE  (‘the Applicant’s MOVE Trade Mark’)

Trade Mark Number:

1242429

Priority Date:

30 May 2008

Goods and services including:

Class 9: Computer programs relating to the training of personnel; training manuals in electronic format; training manuals in the form of a computer program

Class 16: Training guides in the form of printed matter; training materials (other than apparatus) …

Class 41: Provision of training …

 (‘the iMove goods and services’)

Trade Mark:

iMove  (‘the Applicant’s iMove Trade Mark’)

12.     Also according to the Walz declaration, the Applicant has granted a licence to Move 4 Life to use the Applicant’s registered trade marks, detailed above, and the Opposed Trade Marks. Mr Walz declared:

Move 4 Life has used the Applicant’s MOVE Marks since at least 2005 in relation to a comprehensive suite of products associated with occupational health and injury prevention including but not limited to:

(a)Instructional manuals (paper-based and electronic);

(b)Seminars and workshops relating to injury prevention organised and conducted by [the] Applicant and Move 4 Life; and

(c)Training and consulting services delivered by representatives from the Applicant and Move 4 Life or trainers that have been certified by the Applicant and Move 4 Life …

Summary of trade marks

13.     Given the large number of potentially relevant trade marks in this decision they are tabulated below in priority date order for ease of reference.

Trade Mark Number	Trade Mark	Priority Date	Owner	Classes	Status
1040197	MOVE @ WORK	3/2/2005	Applicant	41	Registered/ protected
1049429	MOVE 4 LIFE	6/4/2005	Applicant	9, 16, 41	Registered/ protected
1242423	MOVE	30/5/2008	Applicant	9, 16, 41	Registered/ protected
1242429	iMOVE	30/5/2008	Applicant	9, 16, 41	Registered/ protected
1740623 (series)	MOVE 1 … MOVE 90	10/12/2015	Opponent	41	Registered/ protected
1804165 (series)	MOVE 1 … MOVE 90	10/12/2015	Opponent	9, 41	Under examination – Deferred
1740948	MOVE123	11/12/2015	Opponent	18, 25, 27, 41	Registered/ protected
1804168	MOVE123	11/12/2015	Opponent	9, 35, 41	Under examination - Deferred
1813479	MOVE Training	4/12/2016	Applicant	9, 16, 41	Accepted: Opposed
1883480	MOVE Coaching	4/12/2016	Applicant	9, 16, 41	Accepted: Opposed

Discussion

Grounds of Opposition, Onus and Standard of Proof

14. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44 and 60. As will become apparent it is necessary only that I consider the ground pursuant to s 44 in respect of both opposed trade marks. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the appellate Court.

15.     The onus of proof in an opposition rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 4 December 2016, being the filing date of the applications (‘the Relevant Date’).[3]

[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

[2] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].

Section 44

16. Section 44 of the Act is reproduced below:

Section 44 - Identical etc. trade marks

(1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

(a)the applicant's trade mark is substantially identical with, or deceptively similar to:

(i)    a trade mark registered by another person in respect of similar goods or closely related services; or

(ii)   a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b)the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1: For deceptively similar see section 10.

Note 2: For similar goods see subsection 14(1).

Note 3: For priority date see section 12.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:

(a)it is substantially identical with, or deceptively similar to:

(i)    a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)   a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b)the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Note 3: For priority date see section 12.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(3)If the Registrar in either case is satisfied:

(a)that there has been honest concurrent use of the 2 trade marks; or

(b)that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

Note:  For limitations see section 6.

(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

(a)beginning before the priority date for the registration of the other trade mark in respect of:

(i)            the similar goods or closely related services; or

(ii)           the similar services or closely related goods; and

(b)ending on the priority date for the registration of the applicant's trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.

Section 10 - Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

17. In the SGP the Opponent nominated the Opponent’s Trade Marks in respect of s 44. Subject to sub-ss (3) and (4), to successfully oppose the application pursuant to s 44 of the Act the Opponent must establish that at least one of the Opponent’s Trade Marks (or a combination of them):

·     has a priority date which is earlier than the Relevant Date (‘the first requirement’); and

·     has a specification which includes at least some goods/services which are similar/closely related to at least some of the Applicant’s Goods and Services (‘the second requirement’); and

·     is substantially identical with or deceptively similar to the Opposed Trade Marks (‘the third requirement’).

18.     The Applicant has submitted:

[T]he Opponent has not successfully made out that the Opposed Trade Marks are identical with, or deceptively similar to, any of the Opponent’s Trade Marks, nor has the Opponent established that the Applicant’s Goods and Services are similar to the goods and services covered by the Opponent’s Trade Marks. We therefore submit that the section 44 ground has not been made out.

While it is true that an opponent bears the onus of establishing the grounds of opposition, it is not the case that in the absence of any evidence or submissions from an opponent on the questions of substantial identity and deceptively similarity the Registrar is compelled to find that an opponent has failed to establish its ground of opposition under s 44. The Registrar is required to consider s 44 based on the trade marks nominated in a Statement of Grounds and Particulars.

19.     I note that in the present matter, beyond the submissions quoted above, the Applicant has made no other submissions on the similarity of the respective trade marks or the similarity of their goods and services.

The first requirement

20.     The Opponent’s Trade Marks all have priority dates which are earlier than the Relevant Date. The first requirement is therefore satisfied in respect of all of the Opponent’s Trade Marks.

The second requirement

21.     The 165 Goods and Services includes broad claims for electronic publications and printed publications in electronically readable form in Class 9. These are similar to, for example, the training guides in electronic format; training manuals in electronic format and printed training manuals which are included in the Applicant’s Goods and Services in Class 9 and Class 16 respectively. Indeed, the Opponent’s claims listed at the start of this paragraph are broad enough to be similar to all of the goods in Class 9 and Class 16 of the Applicant’s Goods and Services. The 165 Goods and Services also include education and training services in Class 41. This broad claim encompasses all the services which appear in Class 41 of the Applicant’s Goods and Services. The second requirement is therefore satisfied in respect of the Opponent’s 165 Series Trade Marks.

The third requirement

22.     In the absence of submissions regarding substantial identity, and given that deceptive similarity is sufficient, I move directly to consider deceptive similarity. Guidance for determining whether trade marks are deceptively similar is generally found in the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[4]

[4] [1963] HCA 66, [13].

23. The Opposed Trade Marks are each comprised of the distinctive element MOVE followed by a descriptive second word. As a consequence MOVE is the distinguishing and predominant feature of those trade marks. The Opponent’s 165 Series Trade Marks are comprised of the same distinctive element, MOVE, followed by one of a series of numbers. It is a requirement under s 51 of the Act that series trade marks must resemble each other in material particulars and differ only in respect of some prescribed non-distinctive matters. It is apparent that the number elements of the Opponent’s 165 Series Trade Marks are non‑distinctive elements. This is so, at least, in the view of the Opponent who applied for that series of trade marks on that basis and in the view of the examiner that accepted the application. I concur with that assessment. Consequently, MOVE is also the distinguishing and predominant feature of the Opponent’s 165 Series Trade Marks.

24. The likely impression left by the trade marks under comparison is of MOVE as the principle indicator of trade source. The Opposed Trade Marks therefore so nearly resembles the Opponent’s 165 Series Trade Marks that they are likely to deceive or cause confusion if they are used in connection with the Applicant’s Goods and Services. The third requirement is therefore satisfied. The requirements of both ss 41(1) and 41(2) are thus satisfied. However, that is not the end of the matter. The Applicant has submitted that if those provisions were satisfied section 44(4) would apply. I move to consider that provision now.

Was there prior continuous use?

25. If the Applicant can establish that there was prior continuous use of the Opposed Trade Marks in accordance with the requirements of s 44(4) the Applicant would overcome this ground of opposition. The Applicant has submitted that it has been using the Opposed Trade Marks ‘for several years, and well before December 2015’: December 2015 being the month in which the priority dates of the Opponent’s Trade Marks fall.

26.     It is declared in the Walz declaration that:

The Applicant has granted a licence to Move 4 Life to use [the Applicant’s Registered Trade Marks] and the Opposed Trade Marks (collectively Applicant’s MOVE Marks) in Australia and New Zealand.

Move 4 Life has used the Applicant’s MOVE Marks since at least 2005 in relation to a comprehensive suite of products associated with occupational health and injury prevention …

I confirmed with the Applicant at the hearing that it is this use by Move 4 Life as a purported licensee that the Applicant is relying on to meet the requirements of s 44(4).

27. Section 7 of the Act states that an authorised use of a trade mark by a person is taken, for the purposes of the Act, to be use of the trade mark by the owner of the trade mark. Section 8 of the Act deals with authorised use and authorised users, and states:

(1)   A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.

(2)   The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.

(3)   If the owner of a trade mark exercises quality control over goods or services:

(a)   dealt with or provided in the course of trade by another person; and

(b)   in relation to which the trade mark is used; the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

(4)   If:

(a)   a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and

(b)   the owner of the trade mark exercises financial control over the other person's relevant trading activities; the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

(5)   Subsections (3) and (4) do not limit the meaning of the expression ‘under the control of’ in subsections (1) and (2).

28.     The principal functions of trade marks are to act as an indication of the origin of goods[5] and to allow consumers to make assumptions about the manufacture or quality of the goods they are contemplating purchasing. The concern of legislatures and the courts, therefore, is—and has been—that the use of trade marks by other than the proprietor of the trade mark has the potential to erode these fundamental functions with the result that members of the public may be deceived about the nature of the goods. The following statement made by Aickin J in 1977 in the decision in Pioneer Kabushiki Kaisha v Registrar of Trade Marks continues to exert influence over the relevant law and its interpretation in Australia:

[T]he essential requirement for the maintenance of the validity of a trade mark is that it must indicate a connexion in the course of trade with the registered proprietor, even though the connexion may be slight, such as selection or quality control or control of the user in the sense in which a parent company controls a subsidiary. Use by either the registered proprietor or a licensee … will protect the mark from attack on the ground of non-user, but it is essential both that the user maintains the connexion of the registered proprietor with the goods and that the use of the mark does not become otherwise deceptive. Conversely registration of a registered user will not save the mark if there ceases to be the relevant connexion in the course of trade with the proprietor or the mark otherwise becomes deceptive.[6]

[5] As a matter of convenience I refer simply to goods in this discussion; however, the principles apply equally to services.

[6] [1977] HCA 56, [31] (‘Pioneer’).

29. What is clear from s 8 of the Act is that ‘control’ is a fundamental aspect of authorised use. Without limiting the nature of the control which might satisfy s 8, it explicitly contemplates ‘quality control’ and ‘financial control’ as examples of the type of control necessary.[7]

[7] Trade Marks Act 1995 ss 8(3)-(4).

30. Quality control of the type contemplated by s 8 is typically to be found in license agreements. In Lodestar Anstalt v Campari America LLC (‘Lodestar’)[8] the Full Court of the Federal Court of Australia determined that quality control was not established by the mere granting of a license to use a trade mark. Rather, actual control must be demonstrated and is a matter of substance involving questions of fact and degree and a sufficient connection. While it is asserted by the Applicant that there is a licensing agreement in place, there is no evidence before me that there are, or have been, any formalised licensing agreements in place between the Applicant and Move 4 Life. Even were I to accept the existence of a licensing agreement there is no detail provided as to the terms of the agreement. I am not satisfied that the Applicant exerted the necessary quality control to satisfy the requirements of s 8(3). Can the applicant, instead, rely on financial control?

[8] [2016] FCAFC 92, [97].

31. I note that Mr Walz has declared that he is the sole director of the Applicant as well as the founder, sole director and chief executive officer of Move 4 Life. Does it follow that the Applicant therefore exercised financial control over Move 4 Life? The financial control at which s 8(4) is directed is ‘a legally enforceable power of control’.[9] Circumstances somewhat similar to those in the present matter were considered in the case of Health World Ltd v Shin-Sun Australia Pty Ltd.[10] That case concerned two companies: Shin-Sun and Nature’s Hive. The companies had a common general manager who was the daughter of the directors of Shin-Sun. The daughter was also a majority shareholder of Nature’s Hive. The businesses also had a common place of business. These circumstances were insufficient to lead Jacobson J to find that Shin-Sun exercised ‘a legally enforceable power of control’ over Nature’s Hive of the type contemplated by Aicken J in Pioneer.[11]

[9] Health World Limited v Shin-Sun Australia Pty Ltd [2008] FCA 100, [197].

[10] (2008) 75 IPR 478.

[11] Ibid 500–1.

32. Following the case law discussed above, I am not satisfied that the Applicant itself—as distinct from Mr Walz—exercised financial control over Move 4 Life. Neither am I satisfied by the evidence before me that the Applicant exercised any relevant control over Move 4 Life’s use of the Applicant’s Move Marks or Move 4 Life’s use of the Opposed Trade Marks in particular. For these reasons, I am not satisfied that Move 4 Life is an authorised user of the Opposed Trade Marks. The evidence of use of the Applicant’s Move Marks provided in the Walz declaration does not, therefore, satisfy the requirements of s 44(4).

33. The Applicant has not submitted that the applications might be accepted under the provisions of s 44(3) nor was there any evidence which supported a finding in favour of the Applicant under this sub-section.

34. The Opponent has established its ground of opposition under s 44 of the Act.

Decision

35. Section 55 of the Act relevantly provides:

55Decision

(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.

Note:For limitations see section 6.

36. I have found the Opponent has established the ground of opposition it raised pursuant to s 44 of the Act. As the Delegate of the Registrar I accordingly refuse to register the Trade Mark.

Costs

37. As the successful party, the Opponent is entitled to its costs and I accordingly award costs against the Applicant under s 221 of the Act in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995, with costs for the second of the two oppositions to be assessed as set out in the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad.[12]

[12] (2001) 53 IPR 591.

Robert Wilson
Hearing Officer
Trade Mark Oppositions and Hearings
13 June 2019