Recruitcorp Pty Ltd v State of Queensland (c/o Department of Energy and Public Works – QBuild

[2023] ATMO 202

TRADE MARKS ACT 1995

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

Re:Application under s 92 of the Trade Marks Act 1995 (Cth) by State of Queensland (c/o Department of Energy and Public Works – QBuild) for removal of trade mark registration number 1762706 (class 37) – Q BUILT (figurative) - in the name of Recruitcorp Pty Ltd

Delegate:

Nicole Worth

Representation:

Removal Opponent: Patrick Sefton, Brightline Lawyers

Removal Applicant: Adam Hall, Crown Law

Decision:

2023 ATMO 202

Trade Marks Act 1995 (Cth) – application to remove trade mark under s 92(4)(b) – use of trade mark established during relevant period – registration maintained.

Background

1. Recruitcorp Pty Ltd (‘Removal Opponent’) is the owner of the registered trade mark detailed below.

   (‘Trade Mark’)

   Registration No.: 1762706

   Filing date: 5 April 2016

   Services: Class 37: Construction; Construction of buildings; Development of land (construction)

2. On 10 June 2021 the State of Queensland (c/o Department of Energy and Public Works – QBuild) (‘Removal Applicant’) filed an application to remove the Trade Mark, for all of the services in respect of which it was registered, from the Australian Register of Trade Marks. The application for removal was made under s 92(4)(b) of the Trade Marks Act 1995 (Cth).[1]

   [1] In this decision, all references to a section are references to the Trade Marks Act 1995 (Cth) and all references to a regulation are references to the Trade Marks Regulations 1995 (Cth), unless otherwise stated.

3. The Removal Opponent filed a Notice of Intention to Oppose the removal followed by a Statement of Grounds and Particulars, and the Removal Applicant filed a Notice of Intention to Defend the removal application. Thereafter the parties filed their evidence: evidence in support was filed by the Removal Opponent on 28 February 2022 and evidence in answer was filed by the Removal Applicant on 3 June 2022. The Removal Opponent did not file evidence in reply. The evidence is described in more detail later in this decision.

4. Once the time allowed for filing evidence had passed, the parties requested a hearing by way of written submissions which they filed on their respective due dates. Additional evidence was included in the Removal Applicant’s written submissions, which is addressed in the ‘Evidence’ section of this decision.

5. The matter has now been allocated to me to decide, as a delegate of the Registrar of Trade Marks (‘Registrar’), on the basis of the documents described above.

Legal Framework

1. Section 92(1) provides that a person may apply to the Registrar to remove a trade mark that is or may be registered. Section 92(4) provides the grounds under which such an application may be made, here being relevantly:

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:

…

(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.

1. An application under s 92(4)(b) is subject to s 93(2), which at the time the Trade Mark was filed stipulated that such applications may not be made before a period of five years had passed from the filing date of the application to register the Trade Mark.[2] Given that the application to register the Trade Mark was filed on 5 April 2016, this requirement is satisfied.

   [2] See Act s 93(2) prior to amendments to that section brought about by the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1 pt 3. The amended s 93(2) applies to trade mark applications filed from 24 February 2019 onwards.

2. Section 96 allows for a person to oppose an application for removal by filing a notice of opposition, and s 100(1)(c) places the onus upon the Removal Opponent to rebut the allegation of non-use. Section 100(3) provides that the Removal Opponent will be taken to have rebutted the allegation of non-use if it establishes that the Trade Mark (without additions or alterations substantially affecting its identity) was used in good faith by it during the relevant period.[3]

   [3] Section 100(3) also provides for rebuttal based on circumstances that were an obstacle to use, however no such circumstances have been asserted.

3. Section 101(1) provides that the Registrar may remove the Trade Mark for any or all of the services to which the application for removal relates, if satisfied that the grounds for removal are established. Alternatively, s 101(3) bestows upon the Registrar the discretion not to remove the Trade Mark, even where the grounds for removal are established (although as will be seen, it is not necessary to discuss the Registrar’s discretion here).

4. The non-use application was filed on 10 June 2021. Therefore, the period in which the Removal Opponent must establish use of the Trade Mark in Australia in good faith is the three year period ending on 10 May 2021 (‘Relevant Period’).

5. I proceed on the basis that the standard of proof required is the ordinary civil standard based on the balance of probabilities.[4]

   [4] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52 of the Act.

Evidence

1. The following declarations were filed as evidence in this matter.

   Evidence in support

   Declaration by Michael Jonas Laszlo Korsinczky, Managing Director of the Removal Opponent, with exhibits MK-1 to MK-8, dated 28 February 2022 (‘Korsinczky’)

   Evidence in answer

   Declaration by Paul Hyde, Assistant Director General at QBuild, with Attachment A, dated 3 June 2022 (‘Hyde’),

2. The Removal Applicant’s written submissions contain additional evidence in statements and in a number of documents at Attachments 1 to 9 of the submissions. Attachments 1, 2, 3 and 4 comprise letters to the Removal Opponent and an email chain between the agents of the Removal Opponent and Removal Applicant relating to offers to settle. Attachments 5 to 9 comprise extracts of the Removal Opponent’s website obtained from the Internet Archive. The archived web pages are adduced to show potential use of other trade marks by the Removal Opponent during the Relevant Period. The Removal Applicant submits that such information may be taken into account under reg 21.15(4), which provides that the Registrar is not bound by the rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate.

3. Proceedings before the Registrar should be conducted as efficiently and predictably as possible. As a general rule, evidence that is filed out of time is not considered by the delegate when deciding the opposition. The Trade Marks Office Manual of Practice and Procedure states that evidence filed out of time will not be considered as a matter of routine, and the party filing the evidence must make a compelling case in favour of it being considered.[5] The Removal Applicant has not made any compelling case as to why I should take the evidence contained in its submissions into account. It does not state why the letters and email chain are crucial to its case, nor is it immediately obvious to me, and the website extracts show only that other trade marks were ‘potentially’ used by the Removal Opponent. All of the material is information which was available to the Removal Applicant at the time its evidence in answer was prepared, but there is no explanation as to why it was not presented until the Removal Applicant filed its submissions on 24 November 2023. On these bases, I decline to take the additional evidence into consideration, being paragraphs [3]-[6], [8]-[9], [31]-[37], [47(c)], the last sentence of paragraph [30], and Attachments 1 to 9 of the Removal Applicant’s submissions.

   [5] Trade Marks Office Manual of Practice and Procedure, Part 51.2.5.

4. According to Korsinczky, the Removal Opponent has used the Trade Mark continuously since August 2013 in respect of a building and construction business. The business has been registered with the Queensland Building and Construction Commission under the trading names QKITCHENS AND BATHROOMS and QBUILT AUSTRALIA since the 2008/2009 financial year. Records of that registration show the number of ‘jobs’ undertaken in each financial year, including three jobs in 2018/2019, two jobs in 2019/2020, four jobs in 2021/2022 and two jobs in 2021/2022.[6]

   [6] Korsinczky, Exhibit MK-1.

5. Three quotes provided by the Removal Opponent to customers during the Relevant Period are in evidence.[7] The quotes are dated 9 March 2019, 5 February 2021 and 26 April 2021 and relate to construction and renovation work at three residential properties in Queensland. The Trade Mark appears at the top of each of the pages, as well as QBUILT in plain text which is given as the trading name of the Removal Opponent and as part of the email address ‘…@qbuilt.com.au’. The email address ‘…@qbuilt.com.au’ also appears in an email from Mr Korsinczky to his legal advisor dated 7 April 2021.[8]

   [7] Korsinczky, Exhibits MK-2, MK-3 and MK-4.

   [8] Korsinczky, Exhibit MK-5.

6. Undated photographs of a vehicle registration plate consisting of the letters QBUILT; signage displaying the Trade Mark in what appears to be an indoor workshop; and, allegedly, the Trade Mark upon a shirt (although the image is obscured), are also in evidence.

7. The Hyde declaration is in the nature of submissions rather than evidence. It asserts that use of the plain text word QBUILT and email address ‘…@qbuilt.com.au’ is not use of Trade Mark with additions or alterations not substantially affecting identity. It also submits that the license registration records do not, of themselves, demonstrate use of the Trade Mark. Criticism is made of the three quotes in the Removal Opponent’s evidence, namely that there is no evidence the quotes were actually provided to the alleged recipients or provided on the dates shown, and even if they were it is asserted that such limited use is insufficient to constitute genuine use of the Trade Mark. As to the undated photographs, Hyde submits that aside from being undated neither the vehicle registration plate nor the signage in the workshop constitute use in the course of trade, and it is impossible to tell what is displayed on the shirt.

Reasons

1. The extent of use required to rebut an allegation of non-use is not onerous. A ‘relatively small amount of use’ may be sufficient,[9] and potentially a single bona fide use will be sufficient to prevent removal.[10] If a single use is relied upon, it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[11]

   [9] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, [64] (French CJ, Gummow, Crennan and Bell JJ).

   [10] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

   [11] Nodoz Trade Mark [1962] RPC 1, 7 (Wilberforce J).

2. I consider that the Removal Opponent’s evidence establishes use of the Trade Mark during the Relevant Period. I acknowledge that the evidence from the Removal Opponent is brief, and some criticisms are warranted. However, there is no apparent reason to doubt the authenticity of the quotes which demonstrate clear use of the Trade Mark by the Removal Opponent in relation to the registered services. In the context of (a) the license registration records showing that the Removal Opponent completed ‘jobs’ during the Relevant Period, (b) the undated photographs displaying associated uses of the word QBUILT in a vehicle registration plate and the Trade Mark upon internal signage and (c) the inclusion of ‘qbuilt’ as part of the email address, I do not consider that the alleged lack of corroborating evidence (such as statements from the recipients of the quotes that they did indeed receive them and on the dates shown) casts doubt upon the use shown in the quotes.

3. When the totality of the evidence is considered, I am satisfied that the Removal Opponent has used the Trade Mark in respect of the registered services during the Relevant Period.

Decision

1. The Removal Opponent has rebutted the allegation of non-use under s 92(4)(b). I therefore refuse to remove trade mark registration 1762706 from the Register of Trade Marks.

2. The Removal Opponent sought costs. There is no reason apparent to deviate from the usual rule that costs follow the event. I therefore award costs against the Removal Applicant in accordance with s 221, in the amounts set out in Schedule 8 of the Regulations.

Nicole Worth

Hearing Officer

Delegate of the Registrar of Trade Marks

6 December 2023