Richard James Lifford Hewitt Trustee for the Hewitt Trust v Abercromby's Real Estate Pty Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Oppositions by Richard James Lifford Hewitt Trustee for the Hewitt Trust to applications under section 92 of the Act by Abercromby's Real Estate Pty Ltd to remove trade mark numbers 984195 & 984196(35, 36) - Abercromby & Beatty and Abercromby & Beatty Real Estate – registered in the name of Richard James Lifford Hewitt as Trustee for the Hewitt Trust

Delegate: Iain Thompson

Representation: Opponent: Jim Shaw, Counsel, instructed by Hunt & Hunt, Solicitors
Applicant: Chris Round of Middletons, Solicitors

Decision: 2008 ATMO 34
Proceedings
Section 92 opponent has shown minimal use of the relevant trade marks under its aegis – opposition to removal established; exercise of Registrar’s discretion.
Costs
Each party to bear its own costs.
Background

On 12 April 2005, Abercromby’s Real Estate Pty Ltd, of 1087 High Street Armadale, Victoria, (‘the applicant’) filed applications under subparagraph 92(4)(a) of the Trade Marks Act 1995, (‘the Act’) seeking the removal of the registrations appearing below in respect of all of the services in respect of which they are registered:
Reg No:  984195
Priority Date:               7 January 2004
Good/Services: Class: 35 Auctioneering services
Class: 36 Real estate affairs, financial and monetary affairs; property management
Trade Mark:                ABERCROMBY & BEATTY
Reg No:  984196
Priority Date:               7 January 2004
Good/Services: Class: 35 Auctioneering services
Class: 36 Real estate affairs, financial and monetary affairs; property management
Trade Mark:                ABERCROMBY & BEATTY REAL ESTATE
On 27 July 2005, the owner of the trade marks, Richard James Lifford Hewitt as Trustee for the Hewitt Trust, of Mount Street, Prahran, Victoria, (‘the opponent’) filed Notices of Opposition, (‘the Notices’) to removal of the trade marks from the Register, citing two grounds, namely that the applicant for removal is not a ‘person aggrieved’ within the meaning of the Act, and that the opponent has at all times used or intended to authorise others to use the trade marks in Australia in commerce in respect of services for which the trade marks are registered, including licensed real estate agents, and has done so at all material times.
Hearing
The hearing was before me, as a delegate of the Registrar of Trade Marks, on 6 March 2008. Chris Round of Middletons, solicitors, represented the applicant. Jim Shaw, Counsel, instructed by Hunt & Hunt, solicitors, represented the opponent.
Evidence
The evidence comprises one statutory declaration from each party. In support of the opposition is a declaration by Richard James Lifford Hewitt with exhibits A to L. The statutory declaration in answer is by Peter Timothy Derham (with exhibits PTD-1 to PTD-3); Mr Derham is a director of the applicant for removal.
However, there is a further declaration on which the opponent sought to rely at the hearing. This is a “supplementary” declaration, or declarations, by Mr Hewitt which was/were appended to letters dated 29 March 2007 and 31 May 2007 to the Trade Marks Office from the opponent’s then solicitors that sought a late extension of time to serve and file a declaration and further evidence. This late application to serve and file the further declaration was communicated in full to the applicant and allowed by a delegate of the Registrar by letter dated 17 June 2007. However, despite a further (allowed) request for an extension of time, requested on 28 June 2007, by the opponent’s then solicitors in which to serve and file this evidence on the basis that the opponent was collating or gathering documents from various sources, this additional period did not result in the foreshadowed evidence being served and filed. At the hearing, after some hesitation as to whether it was appropriate in the circumstances to reserve the decision, I stated that I would not regard the “supplementary” declaration as being served or filed and that, accordingly, I would hear submission only in relation to the declarations mentioned at paragraph 4 of this decision.
It is quite clear from the letter dated 28 June 2007 from the opponent’s then solicitors that the “supplementary” declaration or declarations forwarded to the TMO on 29 March 2007 and 31 May 2007 by the opponent’s then solicitors were not regarded by the opponent as being the final form of the evidence, that a further version incorporating other supporting documentation was to be forthcoming and that it, in fact, did not come into being. Additionally, it would have also been procedurally unfair to the applicant to allow any of the materials mentioned in the “supplementary” declaration(s) into evidence to be considered at the hearing as that would constitute an ambush of the applicant. Even if it had been aware of the content of the “supplementary” declaration, it had prepared for the hearing on the basis that these materials did not form part of the opponent’s evidence that it had to address.
The totality of the evidence suggests that the background to this matter appears to be slightly unusual. Mr Hewitt was a director of Abercromby & Beatty Real Estate Pty Ltd (‘A&BRE’) which was the prior owner of the above trade marks that were filed on 7 January 2004 and thus have that priority date. On 23 December 2004 Mr Hewitt executed a Deed of Assignment of the trade marks to the current owner.
Via a license agreement dated 3 June 1999, A&BRE granted a license to Lifford Group Holdings Pty Ltd (‘LGHPL’) to use the ‘name’ ABERCROMBY & BEATTY; Mr Hewitt erroneously refers to this agreement in his declaration as being a license to use the name and trade mark. As well as Mr Hewitt distinguishing between a name and a trade mark, other agreements executed by Mr Hewitt which are in evidence make the same distinction.
Via a transfer agreement dated 25 January 2002, A&BRE transferred “all of its rights title and interest” in trade marks whether registered or pending and all other rights to use or otherwise be associated with the name Abercromby & Beatty Real Estate to the opponent.
There is a further licence agreement in evidence also dated 25 January 2002 in which the parties (A&BRE and the opponent) are defined at the head of the agreement as “transferor” and “transferee” but are confusingly referred to within the body of the agreement as “licensor” and “licensee.” One would suppose that, being executed concurrently with the execution of the agreement mentioned in the preceding paragraph, the opponent was licensing A&BRE to use the name “Abercromby & Beatty Real Estate” and the trade mark which is mentioned but not specified. Otherwise, why would A&BRE license the opponent to use names or trade marks which it was concurrently transferring to the opponent? However, if the arrangements of the other agreement of 25 January 2002 are applied to the license agreement, it would appear that as well as transferring the business name and unspecified trade mark to the opponent, A&BRE also licensed the use of the name and the unspecified trade mark. How A&BRE could license the use of a name and trade mark it had transferred is not clear. Thus, the true meaning of the license agreement is, by the failure of the definitions involved, quite opaque.
Lifford Group Holding Pty Ltd hold, or held, a corporate real estate agent’s license that was current during the relevant period.
Various documents appended to Mr Hewitt’s declaration show the trade mark in use in the course of trade. Documents to which dates can be confidently attributed include a letter dated 8 November 1999, a receipt for some $80,000 being a part deposit, dated 7 March 2003, and the corresponding balance of $220,000 dated 8 April 2003. These receipts both bear, as well as the trade mark ABERCROMBY & BEATTY, the words “Licensed Real Estate Agents Consultants Auctioneers & Valuers LIFFORD GROUP HOLDINGS PTY LTD.” There are other similar receipts in the opponent’s evidence in support which are in respect of rental of a property between 1 March 2004 and 7 June 2004.
By the dates of the above transactions, the trade mark was in use before and after application was made to register it as a trade mark by the previous owner of the trade mark and by Lifford Group Holdings Pty Ltd although the evidenced use is very slight.
Mr Denham in his evidence in answer says that the applicant for removal has filed two trade mark applications, current details of which appear below:
App No:  1044500
Priority Date:               3 March 2005
Good/Services: Class: 35 Auctioneering services
Class: 36 Provision of real estate services; financial services; property management services
Trade Mark:                ABERCROMBY'S ESTATE AGENTS
Reg No:  1044630
Priority Date:               3 March 2005
Good/Services: Class: 35 Auctioneering services
Class: 36 Provision of real estate services; financial services; property management services
Trade Mark:                ABERCROMBY'S
Mr Denham says that before using and applying to register the above trade marks he asked a Mr Ian Dunley on 25 November 2004 whether he had any objection to the applicant trading under applicant’s trade marks. Mr Dunley was, according, to Mr Denham, the registered proprietor of the Victorian business name ‘Abercromby and Beatty’. Mr Denham submits an electronic diary entry as evidence of his meeting with Mr Dunley.
I mention now that there are two records of relevant business names on the Victorian Consumer Affairs Data Base to which both parties implicitly refer me but neither of which has been put into evidence by the parties. The first is a registration of the business name ‘Abercromby & Beatty’ which commenced on 2 May 1984 and ceased on 2 May 2002. The second is a registration of the business name ‘Abercromby and Beatty’ which commenced on 24 July 2002 and is still current.
Therefore, it is possible that the parties, when they refer to business name registrations, refer to different Victorian business name registrations. However, and I stress this now, a business name registration, per se, gives no trade mark entitlement as to either use, ownership, granting permission to another to use any trade mark, licensing of any trade mark to another person, or registration. In Lone Star Steakhouse & Saloon Inc v Zurcas [2000] FCA 29 Lingren J stated at paragraph 25:
A factor against the applicants is that they did allow their former business name to lapse as a result of which Ms Zurcas was able to register the name, "Lonestar Saloon". Whether as a result of erroneous legal advice or for some other reason, she seems to have thought that this gave her a right to carry on business under that name. Registration of a business name under the Business Names legislation does not do that at all: it merely prevents contravention of the legislation, which provides generally to the effect that a person may not carry on a business under a name other than the person's own name unless the business name is registered under the Act.
By duly registering the business name "Lonestar Saloon", Ms Zurcas avoided contravening s 5 the Business Names Act 1962 (Vic) but this did not give her a "right" to carry on business under that name, let alone a right to do so in infringement of the trade marks of others.
Mr Denham goes on in his declaration to make the allegations that Mr Hewitt is not a licensed real estate agent, but that Mr Hewitt’s mother is one. He alleges that Internet searches of the trade mark ABERCROMBY & BEATTY at the time (early 2005) did not show Mr Hewitt to be connected with any business, and that if Mr Hewitt had been operating a real estate agency in Victoria he (Mr Denham) would have been aware of it and that Mr Hewitt could not use the trade marks as Mr Hewitt was not a licensed real estate agent.
Also exhibited to Mr Denham’s declaration are two letters of demand from the opponent and a response to them from the applicant. These, combined with the pending applications for registration, and the stated grounds for rejection under section 44 in an examiner’s report, establish the applicant as a person aggrieved.
Discussion
Subsection 92(4)(a)
Subsection 92(4)(a) 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:
(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;
In these proceedings, the onus is on the opponent to establish the opposition to the application. Section 100 provides, inter alia:
100Burden 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
(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.
Note 1:If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).
Note 2:For file, month and registered owner see section 6.
Putting to one side the lack of any express information in the opponent’s declaration in support of the opposition concerning the prior owner’s intention to use the trade mark, the opponent might be viewed, at first flush, as having not established its opposition to the removal for the following reasons:
·    The documentation in evidence shows that the trade mark has been used by Lifford Group Holdings Pty Ltd.
·    However, there is no evidence that such use was an authorised use.
·    The license by A&BRE to Lifford Group Holdings Pty Ltd to use the business name ABERCROMBY & BEATTY cannot be construed as a license to use the trade mark and is anyway not between the current owner of the trade mark and the apparent user of it.
·    Neither of the two agreements dated 25 January 2002 between A&BRE and the opponent mention a licensed use of the trade mark by Lifford Group Holdings Pty Ltd.
·    The second agreement is, as discussed above, incomprehensible.
Thus, while the documentation in evidence quite clearly shows the transfer of the trade marks by deed to the opponent, the relationship between Lifford Group Holdings Pty Ltd and the opponent is not explained, neither is there any evidence of a license agreement between the opponent and Lifford Group Holdings Pty Ltd or that the use of the trade mark was an authorised use.
I would add that, in my consideration of the evidence, it quite clearly shows use of the trade mark by Lifford Group Holdings Pty Ltd and previously by A&BRE, and while that use is not large in volume, it would be sufficient in proceedings under section 52 to defeat an application for registration of the same trade mark by a third party on the basis of the ownership of the trade marks.
However, I consider that the evidence filed by the parties makes it quite clear that, notwithstanding the signal shortcomings in the opponent’s evidence, the relevant trade marks were being used under the aegis of the opponent, even if this use might have been very slight and had not been properly documented as an authorised use. However, all that is required is slight user to defeat a non-user application if that user be bona fide. Unauthorised or unregistered user which is undocumented, or not properly documented, under the aegis of the owner has, in the past, been regarded by the Courts as sufficient to prevent removal for non-user: Re Polo Textile Industries Pty Limited and Keith Gamble Pty Limited v Domestic Textile Corporation Pty Limited and Polo Textile Industries Pty Limited [1993] FCA 203; (1993) 114 ALR 157; (1993) AIPC 91-007; (1993) 42 FC.
The fact that I have found that the trade mark was used by the owner, or under the owner’s aegis, must also answer in the affirmative the question concerning the prior owner’s intention to use the trade mark at the time that application was made for its registration. The fact that the trade marks were used before application was made to register them, then used subsequent to registration, must lead to a positive inference as to the prior owner’s intentions at the time of filing the applications.
I do not think that Mr Hewitt’s lack of a real estate license is relevant in these proceedings. A man might be a director of a frozen food company and not have a food preparation safety certificate or he might be the director of a building company without any relevant building trade certificates. I am not certain why real estate sales companies should be any differently viewed. If it is a law that a director of a real estate company in Victoria must have a real estate agent’s license, this has not been demonstrated to me.
Thus, although the opponent’s evidence is far from being ideal, it is, I consider, the bare minimum required to establish the opposition to the applications for removal.
If I am wrong in the above conclusion, I make the following observations.
Section 101 of the Act provides:
101Determination of opposed application—general
(1)Subject to subsection (3) and to section 102, if:
(a)the proceedings relating to an opposed application have not been discontinued or dismissed; and
(b)the Registrar is satisfied that the grounds on which the application was made have been established;
the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.
(2)Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.
(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.
Note 1:If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).
Note 2:For registered owner see section 6.

The use of the word ‘may’ within subsection 101(1) makes it clear that the decision whether to remove a trade mark from the Register of Trade Marks is discretionary. Thus, while an opposition to removal might not be established to my satisfaction I might decline to remove the trade mark from the Register if I am satisfied in all of the circumstances that it is reasonable to do so.
If the opponent has not established its opposition to the removal of the trade marks, I consider, as previously stated, that the evidence filed by the parties makes it clear, on balance, that the relevant trade marks are being used under the aegis of the opponent, even if this might have been very slight and had not been properly documented as an authorised use. In Polo Textiles, above, this was considered sufficient to defeat a cross-claim for non-use.
The use of the trade mark would have been, as noted above, certainly enough to establish or maintain ownership of the trade marks at common law and the evidence in support would (in terms of section 58 of the Act) quite clearly defeat an application for the registration of the same trade mark made in respect of the same services by a third party in proceedings under section 52.
The evidence also implicitly makes it clear that Mr Derham was aware of some prior user of the trade mark ABERCROMBIE & BEATTY and wrongly believed that the alleged owner of the business name, Mr Dunley, could give him permission to use either that trade mark or a part of it. Also implicit in this mistaken belief is some perception that the trade marks involved are at least deceptively similar – else why would Mr Derham think to ask permission?
Also, somewhat remarkably, although Mr Derham thought to ask permission from the alleged business name registrant, he seemingly did not think to search the Register of Trade Marks before filing the applications and apparently first became aware of the reportedly conflicting registrations subsequent to the filings.
It transpires, however, that the opponent also seemingly believed that a license to use a business name was a license to use a trade mark.
I have reservations about whether it would be appropriate to order the removal of a trade mark from the Register in circumstances where the owner has, on balance, probably used the trade mark, or the trade mark has been used under his aegis, but this has not been properly documented partially for failure to recognise the differences between a trade mark and business name. This additionally being in circumstances where the person who seeks the removal has done so partially because he has apparently made the identical mistake when adopting that particular trade mark (or one that he implicitly concedes is deceptively similar) for use.
In these circumstances I am, if I am wrong in deciding that the opponent has established his opposition to the removal application, satisfied that it is reasonable not to remove the trade marks from the Register.
Costs
Considering all of the circumstances, I also believe it is reasonable to order that each party bear its own costs.
Iain Thompson
Hearing Officer
Trade Marks Hearings
20 May 2008

[2008] ATMO 34

20 May 2008

Key Legal Topics

Areas of Law

Commercial Law

Equity & Trusts

Intellectual Property

Legal Concepts

Procedural Fairness

Standing

Statutory Construction

Delegate:	Iain Thompson
Representation:	Opponent: Jim Shaw, Counsel, instructed by Hunt & Hunt, Solicitors Applicant: Chris Round of Middletons, Solicitors
Decision:	2008 ATMO 34 Proceedings Section 92 opponent has shown minimal use of the relevant trade marks under its aegis – opposition to removal established; exercise of Registrar’s discretion. Costs Each party to bear its own costs.