Rise & Shine Education Pty Ltd v Shine Lawyers Pty Ltd
[2023] ATMO 158
•16 October 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Rise & Shine Education Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by Shine Lawyers Pty Ltd for removal of trade mark number 2024656 (41, 43) – Shine Advantage – in the name of Rise & Shine Education Pty Ltd
Delegate:
Nicholas Smith
Representation:
Opponent: Andrew Fox of Counsel instructed by GMH Legal Pty Ltd
Applicant: Jacob Grumetza of IP Wealth Pty Ltd
Decision:
2023 ATMO 158
Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(a) application for removal - Removal Opponent’s evidence does not show use of the Trade Mark during the relevant period. Removal Opponent shows intention to use the Trade Mark for a subset of the services for which it was registered – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register for some of the services for which it is registered
Background
This decision is pursuant to an application made on 14 July 2021 under s 92(4)(a) of the Trade Marks Act 1995 (Cth) by Shine Lawyers Pty Ltd (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks. The application is made in respect of all the services for which the trade mark is registered, that is, the application is for complete removal of the trade mark.
Registration No.
2024656
Lodgement date
22 July 2019
Services
Class 41: academies (education); advisory services relating to education; conducting of educational courses; design of educational courses, examinations and qualifications; dissemination of educational material; education services; educational assessment services; educational consultancy services; educational instruction; educational services; electronic publication of information on a wide range of topics, including online and over a global computer network; event management services in relation to the organisation of educational, entertainment, sporting or cultural events; foreign language education services; health education; information relating to education; kindergartens (nursery schools); kindergarten services (education or entertainment); language teaching; lingual education; management of education services; management of educational events; musical education services; nursery schools; organisation of competitions (education or entertainment); organisation of contests (education or entertainment); organisation of teaching activities; physical education; physical education instruction; physical health education; primary education services; preschool teaching; preschools (education); providing facilities for educational purposes; provision of children's educational services through play groups; provision of education courses; provision of educational courses; provision of educational information; provision of facilities for education; provision of information relating to education; setting of educational standards; sports education services; teaching; weblog (blog) services (online publication of journals or diaries)
Class 43: child minding services; day care services for children; day-care centres (day-nurseries); provision of child care centres; provision of day nurseries (other than schools)
(‘Registered Services’)
Owner
Rise & Shine Education Pty Ltd (‘Opponent’)
Trade Mark
Shine Advantage
(‘Trade Mark’)
2. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
3. The Opponent has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 1 September 2021 and a Statement of Grounds and Particulars (‘SGP’) on 30 September 2021. The Applicant filed a Notice of Intention to Defend on 16 November 2021.
The Opponent subsequently filed evidence in support of its opposition to removal (‘EIS’). The Applicant did not file evidence in answer. This material will be discussed in more detail below.
5. Once the time allowed for filing evidence had ended, the parties were given an opportunity to request an oral hearing or a hearing by written submissions. On 31 May 2023 the Applicant requested a hearing by submissions (later changed to video-conference) and paid the appropriate fee. The matter was set down for a hearing on 5 September 2023. In line with usual practice, a letter was sent to the parties on 4 July 2023 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing. The Opponent filed written submissions on 21 August 2023 (‘Opponent’s Submissions’). The Applicant filed written submissions on 29 August 2023 (‘Applicant’s Submissions’). At the hearing Andrew Fox of Counsel represented the Opponent and Jacob Grumetza represented the Applicant.
6. 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, any oral submissions made by the parties and the evidence listed below:
·The application for removal;
·The Notice of Intention to Oppose and SGP;
·The Opponent’s Submissions;
·The Applicant’s Submissions.
EIS
- Declaration by Edward Zaki, director of the Opponent, dated 15 February 2022 (‘Zaki declaration’) together with Exhibits 1 to 18.
The Relevant Provisions
7. 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 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;
The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 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[…]
(2) 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
I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[1]
[1] Pfizer Products Inc. v Karam [2006] FCA 1663 (Gyles J) and more recently: 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.
In accordance with s 101, I may decide to remove the Trade Mark from the Register for all or some of the services 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.
Opponent’s Evidence
The relevant claims/statements in the Zaki declaration are summarised below:
· The Opponent is an Australian company that is one of a group of 15 companies that together are known as Rise and Shine Group (‘Rise and Shine Group’).
· Rise and Shine Group operates 7 early childhood education and care centres under a number of brands including the Trade Mark. The declarant caused the application for the Trade Mark to be filed because the Opponent was using the Trade Mark for these purposes and has continued to use the Trade Mark for its early childhood education and care centres.
· The Trade Mark is the name given to and used for the Rise and Shine Group’s early childhood curriculum and has been used as the name of the curriculum since 2012. In particular, the Rise and Shine Group curriculum is broken down into the following:
o SHINE ADVANTAGE Smart Start program, which includes a separate learning space in each centre;
o SHINE ADVANTAGE Inspired program;
o SHINE ADVANTAGE Unite program;
o SHINE ADVANTAGE Fit program;
o SHINE ADVANTAGE Crew – which refers to the name of the staff educational room inside each of the Rise and Shine Group’s centres.
· The Opponent has used the Trade Mark as part of a number of advertising campaigns, including on social media, on pamphlets and booklets, on its website at and on various material provided to students and parents.
The Exhibits to the Zaki declaration contain material supporting the Opponent’s claims that the Trade Mark is displayed on various material produced and distributed in connection with the Rise and Shine Group’s childhood education and care centre business. What is apparent however in a review of the material is the following:
·There is no evidence of the structure of the Rise and Shine Group or any connection between the Opponent and the early childhood education and care centres operated by the Rise and Shine Group, other than the assertion, referred to in the paragraph above, that the Opponent is a member of the group. There is no evidence that the Opponent exercises control over the use of the Trade Mark by the other entities of the Rise and Shine Group.
·The Opponent’s education and child care centres are operated under the name of ‘Rise and Shine’ and the centres are known as Rise & Shine kindergartens. The term Shine Advantage is used to refer to the curriculum available in the Rise & Shine centres and is displayed on various signs and material in respect of that curriculum. The Rise & Shine marketing material refers to the Rise & Shine centres offering the ‘Shine AdvantageTM Curriculum’.
Discussion
Though the onus is, in terms of s 100, on the Opponent in this matter, that onus is not particularly arduous. In Aston v Harlee Manufacturing Co[2] Fullagar J observed:
[2] [1960] HCA 47; (1960) 103 CLR 391; [1960] ALR 605; 34 ALJR 242, [21].
[…] 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.
While this observation was made in proceedings under the Trade Marks Act 1955 (Cth), 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[3] the Registrar’s delegate Mr Forno said:
[3] [2000] ATMO 31.
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.
When considering use 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)(a),[4] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[5] Use of the Trade Mark by an authorised user (as defined by s 8) is taken to be use of the Trade Mark by the Opponent.[6]
[4] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).
[5] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).
[6] Act s 7(3).
16. The principles when a trade mark has been used were recently summarised in the case of Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, in which the High Court noted the following:
Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark.
Whether a sign has been "use[d] as a trade mark" is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not "as a trade mark" was in Irving's Yeast-Vite Ltd v Horsenail, where the phrase "Yeast tablets a substitute for 'Yeast-Vite'" was held to be merely descriptive and not a use of "Yeast-Vite" as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.
The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.[7]
[7] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).
In the oral hearing the Opponent’s representative made the submission that I do not need to consider the question of authorisation for use, nor do I need to consider whether the Opponent has rebutted the allegation in respect of the class 43 services because they were not raised by the Applicant in the Applicant’s Submissions, either in written form or in the hearing. This is not a correct understanding of the role of this office in a removal application. The Applicant has made an application for the removal of the Trade Mark for all the services for which it is registered and the onus is on the Opponent (under s 100) to rebut the allegation. The scope of the onus placed on the Opponent is not circumscribed by what is covered by the Applicant in its submissions; indeed if I were to take the Opponent’s submissions to its logical conclusion I would have to conclude that if the Applicant had chosen to make no submissions in this case the Opponent would have been deemed to satisfy the requirements of s 100 regardless of the evidence. This is an incorrect reading of the onus; rather the onus is on the opponent to satisfy the Registrar of the requirements of s 100(1) based on the evidence it chooses to rely on.
The EIS states that the Opponent is part of a broader group that operates a chain of early childhood care and education centres under the Rise & Shine mark. The Opponent’s evidence includes the sworn statement from Mr Zaki that at the relevant date, being the date the Application for registration of the Trade Mark was filed, the Opponent intended to use the Trade Mark for the Registered Services, or at least (and this is unclear in the evidence) authorise the use of the Trade Mark for the Registered Services by the entities comprising the Rise and Shine Group. Paragraph 27 of the Zaki declaration makes the explicit statement that the evidence in the Zaki declaration establishes use in respect of each of the individual services for which the Trade Mark is registered.
However, neither the statement about intention to use nor the conclusory statement of actual use is supported by the remainder of the Zaki declaration, including both the documentary evidence attached to the Zaki declaration and the statements about the actual use of the Trade Mark. The Zaki declaration gives evidence that the Rise and Shine Group has used the Trade Mark for the curriculum offered by the early childhood education centres that it operates. This does not establish that the Trade Mark has been used by the Opponent, nor that it has been used for all the Registered Services. In addition, I note that the evidence of Mr Zaki’s intention entirely relates to his intention to operate the business in the form that he has done so, namely as a chain of early childhood care and education centres and not, for example, to operate a business offering ‘electronic publication of information on a wide range of topics, including online and over a global computer network’.
20. The case of Brenda Lomas v WM Productions[8] is an example of a case where, notwithstanding the removal opponent making a bare statement of intention to use, such an intention was not found. The delegate noted that, while the onus was not high, the evidence of the removal opponent fell short of that standard, notwithstanding the bare statement. The present case is similar; the Opponent has made a bare assertion which restates the requirements of s 92(4)(a) and accompanies it by evidence that suggests that the actual use of the Trade Mark (and from that I can infer that the intent to use) is for a narrower set of services, the intention was limited to that narrower set and, in any event, that such use may not be use by the Opponent.
[8] [2005] ATMO 57 (Hearing Officer Williams). I note that the removal application was ultimately unsuccessful due to the removal applicant failing to establish standing, notwithstanding the delegate’s statements as to the outcome had standing been established.
21. While noting the relatively low bar placed on the Opponent to shift the onus on the Applicant to show that it lacked the intention to use the Trade Mark, I find that, due to the issues outlined above, the Zaki declaration is insufficient to shift that onus in respect of any of the services for which use by the Opponent has not been demonstrated. It is therefore necessary to consider whether the Zaki declaration shows use or an intention to use the Trade Mark by the Opponent in respect of the Registered Services.
Does the evidence show an intent to authorise the use of the Trade Mark or actual authorisation of use of the Trade Mark?
22. The Zaki declaration provides evidence of use of the Trade Mark by the Rise and Shine Group. The Zaki declaration, aside from an assertion that the Opponent is a member of the group and the group collectively operates the Rise and Shine business, fails to provide evidence of the connections between the corporate entities in the Rise and Shine Group, which corporate entity is using the Trade Mark, and whether that use is authorised by the Opponent. As the onus to show use or intention to use under s 100 is use by the Opponent (or authorised by the Opponent) it is insufficient to argue that there is an obligation on an Applicant to raise this issue in its submissions; rather it is for the Opponent to put on proper evidence of authorisation in its EIS.
Under s 8, authorised use requires use under the control of the trade mark owner. In the Full Federal Court decision of Lodestar Anstalt v Campari America LLC,[9] Besanko J summarises the law at paragraph 63:
Section 8(1) of the Act defines a person who is an authorised user of a trade mark and the key concept in the subsection is that the trade mark is used in relation to goods or services under the control of the owner of the trade mark. Section 8(2) makes it clear that an authorised use only applies to the extent that the trade mark is used under the control of the owner of the trade mark. By reason of s 7(3) an authorised use is taken to be a use of the trade mark by the owner of the trade mark. Subsections 8(3) and (4) provide for two cases where the use of a trade mark is taken to be use under the control of the owner of the trade mark: the owner of the trade mark exercises quality control over the relevant goods or services or the owner exercises financial control over the other person’s relevant trading activities. Section 8(5) makes it clear that the meaning of the expression under the control of is not limited to the two cases identified in s 8(3) and (4) of the Act.
Justice Besanko later stated that:
98. [A]ctual control will be a question of fact and degree. A licence agreement may contain a term that sets in detail a quality standard to be achieved. The details in the agreement may be such that it is not necessary for the registered owner to give directions or instructions from time to time. The licensee, aware of its obligations, may faithfully comply with those obligations without any entreaties or demands from the licensor. The primary judge had such a situation in mind when he referred to cases where there was obedience to the trade mark owner “so instinctive and complete that instruction was not necessary”.
[9] [2016] FCAFC 92 (Allsop CJ, Greenwood, Besanko, Nicholas and Katzmann JJ).
In that same case, Katzmann J commented on the construction of section 8 as follows:
169. Section 8 provides that whether a person is an authorised user of a registered mark and whether the use of the mark by that person is an authorised use depend on whether the person uses the mark under the control of the registered owner (subss (1) and (2)). Subsections (3)–(4) reveal that use will be taken to be use under the control of the owner where, for example, the owner “exercises quality control over goods or services ... dealt with or provided in the course of trade by another person ... and ... in relation to which the mark is used” or “exercises financial control over the other person’s relevant trading activities”. Subsection (5) states that subss (3)–(4) do not limit the meaning of the expression “under the control of” but this statement is ambiguous. It might signify that “control” is not limited to quality control or financial control. On the other hand, it might signify that control is not limited by the context provided by subs (3)–(4). The former construction is the preferable one. In my opinion, the examples given in subss (3) and (4) give colour to the concept of control in s 8. The language used in the two subsections strongly suggests that — regardless of the form control might take — it is the exercise of control that matters, not merely the right to do so.
…
183. In my opinion, under the 1995 Act the use of a registered trade mark by an authorised user will only be taken to be use by the registered proprietor of the mark if the registered proprietor exercises control over the use of the mark during the period in question so as to maintain a connection in the course of trade between the goods or services and the registered proprietor. In a case where a registered proprietor of a trade mark is relying on use by an authorised user, it is still necessary to demonstrate that the trade marks indicate a connection in the course of trade with the registered proprietor. The purpose of s 8 is to identify the means by which that is done. …
184. A bare licence to use a trade mark, particularly a perpetual licence, would not be sufficient. Without more, it would amount to a divestment of control. But there is no reason in principle why control might not be exercised through conditions imposed by agreement on the use to which the trade marks might be put and, in the event of an application to cancel the registration for non-use, proved by evidence that the authorised user is complying with those conditions. Whether or not that is sufficient in any particular case, however, will depend on the terms of the agreement, most importantly whether the control is such as to maintain the registered proprietor’s connection with the marks. As the Act makes clear, that can be achieved if either quality control or financial control is exercised. If it is not, the registered proprietor (upon whom the burden of proof rests), must show that it has exercised some other form of control in the relevant period which maintains its connection with the marks.
26. In Trident Seafoods Corporation v Trident Foods Pty Ltd (‘Trident’),[10] the Full Federal Court at paragraph 45 noted that as a matter of practicality, control could be found in circumstances where the two companies shared the same directors:
The issue is not whether one company controlled the other but rather whether Trident Foods, even though a wholly owned subsidiary of Manassen, had control over Manassen’s use of the trade marks. In that sense it is significant that at all relevant times the two companies had the same directors. It must be inferred from the evidence that the two companies operated with a unity of purpose. Trident Foods held the trade marks. Manassen sold the products under the TRIDENT brand and thereby used the trade marks. In the primary judge’s view these arrangements showed nothing more than that Trident Foods acquiesced in Manassen’s use of the marks: PJ [179(4)] and [217]. In the present case, where there were common directors, the concept of mere acquiescence by the one company to the use by the other company (albeit that Manassen is the parent company) appears alien. As directors of Trident Foods, the directors had obligations to ensure the maintenance of the value in the marks. To that end Trident Foods necessarily controlled Manassen’s use of the marks by reason of the simple fact that it owned the marks and its directors, who were also Manassen’s directors, must have had one common purpose, being to maximise sales and to enhance the value of the brand. … it is commercially unrealistic in the circumstances of the present case not to infer that the owner of the marks controlled the use of the marks because the common directors necessarily wished to ensure the maintenance and enhancement of the value of the brand.
[10] [2019] FCAFC 100 (Reeves, Jagot and Rangiah JJ).
27. In the present case the Opponent has provided no evidence of which entity has used the Trade Mark, whether a licence exists between that entity and the Opponent, and no evidence of any practical control over any use of the Trade Mark by the Opponent. While Trident indicates that in certain circumstances (such as where the companies shared the same directors) control can be inferred, such evidence does not exist before me; indeed no documentary evidence has been filed indicating any connection between the Rise and Shine Group and the Opponent; indeed all that is stated is that the Opponent is one of 15 companies that together are known as the Rise and Shine Group. I note that the Opponent is legally represented and evidence of connection or control between the entities in the Rise and Shine Group, were such evidence available, would not be difficult to provide. Consequently, I am not satisfied that the evidence in the Zaki declaration either shows use of the Trade Mark by the Opponent (as it is not clear that the use shown in the Zaki declaration is by the Opponent rather than one of the other entities in the Rise and Shine Group), nor does it show that such use (were it use by the other entities in the Rise and Shine Group) is authorised use of the Trade Mark under s 8.
28. While I am satisfied that the Opponent has failed to show any actual use (be it directly by the Opponent or authorised by the Opponent) of the Trade Mark for any of the Registered Services, that does not end the matter as I must reach a conclusion that at the relevant date, the Opponent lacked the intention to use or authorise the use of the Trade Mark for the Registered Services. While the Opponent’s evidence does not satisfy the technical requirements for authorisation set out in s 8 as required by the authorities above, I am reluctant to conclude, on the basis of the evidence before me, that there was no intention to use or authorise the use of the Trade Mark at the relevant date. While there is no evidence of connection or control before me it is apparent that there is a group of companies that apparently are connected in some way that are using the same trade marks including the Trade Mark, in the same way, in respect of a single business operation (being a chain of early childhood education and care centres). Notwithstanding the lack of documentary evidence supporting the assertions made in the Zaki declaration, I find on the balance of probabilities that the Opponent is indeed an entity that is connected to the broader Rise and Shine Group which operates a set of early childhood education and care centres under the Rise & Shine mark. The Shine Advantage term appears to have been used since 2012 and there is clearly some consistency in branding and use of both the Rise & Shine brand and the Shine Advantage brand across the Rise and Shine Group. Given that there is clearly a single consistent business across the various entities in the Rise and Shine Group, and given the extensive evidence of the use of the Shine Advantage term in respect of the Rise and Shine Group’s curriculum, including at the time the Trade Mark was applied for, it would be artificial and indeed willful blindness to the actual evidence of consistent detailed use across the 7 centres to conclude that the Opponent lacked any intention to authorise the use of the Trade Mark by the other entities in the Rise and Shine Group at the relevant date. I am satisfied that the Opponent, at the relevant date, did intend to use and/or authorise the use of the Trade Mark by the other entities in the Rise and Shine Group for the services for which the Trade Mark has been used for. The nature of these services is discussed below.
What services did the Opponent intend to use and authorise the use of the Trade Mark for at the relevant date?
29. The Rise and Shine Group has used the Trade Mark for its education and child care business to describe its curriculum product – namely its Shine Advantage curriculum. This use, based on the evidence before me, has been consistent since 2012. I am not satisfied that the Opponent, at the relevant date, had an intention to use/authorise the use of the Trade Mark for any services other than what it has actually used/authorised the use of; noting that its early childhood education and care centres themselves are branded with the Rise & Shine trade mark.
30. The question therefore is whether the use of the Trade Mark to describe the curriculum offered by the Rise and Shine Group is use of (and therefore an intention to use/authorise the use of) the Trade Mark in connection with the Registered Services or a subset thereof. Noting that a curriculum is an essential element of modern-day child care centres I accept that the Opponent has used the Trade Mark as a trade mark on a variety of material and such use is separate and in addition to its primary Rise & Shine brand, and that its use is in respect of its broader early childhood education and child care business, rather than strictly limited to the provision of a curriculum product. The Opponent does not offer a curriculum product to third parties, rather it offers early childhood education and care centres, an essential and distinguishing element being its Shine Advantage curriculum.
31. I am therefore satisfied that the Rise and Shine Group has used (and hence the Opponent intended to use) the Trade Mark for the following services:
Class 41 kindergartens (nursery schools); kindergarten services (education or entertainment); nursery schools; preschool teaching; preschools (education)
Class 43: day care services for children; day-care centres (day-nurseries); provision of child care centres; provision of day nurseries (other than schools)
32. An issue of significant dispute between the parties was whether use of the Trade Mark for specific services in respect of earlier childhood education and care centres, which fell within the broad categories of services listed below, was sufficient to constitute use in relation to each of those broad categories as a whole, or whether those broad claims should be restricted in scope.
Class 41: academies (education); conducting of educational courses; education services; educational instruction; educational services; health education; lingual education; musical education services; physical education; physical education instruction; physical health education; provision of education courses; provision of educational courses; sports education services; teaching
33. In Ampac Pty Ltd v Boss Fire & Safety Pty Ltd (‘Ampac’) the relevant principles governing this question were summarised as follows:
28. The Removal Opponent referred to the decision of the Federal Court in McHattan v Australian Specialised Vehicle Systems Pty Ltd (‘McHattan’). In McHattan, the applicant’s trade mark GJM TAIPAIN was registered for motor vehicles. The respondent was seeking to register a similar mark TAIPAN for vehicles, particularly military vehicles. The respondent filed two applications to remove the registered trade mark, with one seeking removal of ‘military vehicles’ and the other seeking removal of ‘armoured military vehicles of greater than 8 tonnes’. Prior to the removal applications being decided, the applicant sought an interlocutory injunction against the respondent to restrain the respondent’s use of TAIPAN. In this context, Drummond J was required to consider the scope of the applications for removal in assessing the applicant’s prospects of success in the infringement claim. His Honour said:
But, in my opinion, the restricted scope the registered proprietor of a mark has to defeat a non-use application brought under s 92 of the 1995 Act compared with the position under the 1955 Act shows that there is a real question as to the proper interpretation to be placed on the expression "any or all of the goods ... in respect of which the trade mark ... is registered" in s 92(1): if that provision is construed to permit fine distinctions to be drawn between two items, eg, between a sedan motor car and a utility motor car or the sort of distinction implicit in the second of the respondents’ non-use applications, viz, that between armoured military vehicles of greater than eight tonnes and smaller armoured military vehicles, the value of trade mark registration under the new Act is potentially capable of very great erosion.
If s 92, on its proper construction, permits of fine distinctions like this, s 44 might well need to be given a radically different reach from that which it appears on its face to have: there would seem to be little point in allowing limitation of a registration because of non-use of the mark in relation to goods only slightly different from those in respect of which the mark was registered, without also allowing the successful challenger to obtain registration for himself of that same mark in respect of those slightly different goods.
29. The Removal Opponent also referred to the decision of the Federal Court in Pioneer Computers Australia Pty Ltd v Pioneer KK (‘Pioneer’), where Bennett J considered whether the use of a trade mark on ‘optical disc drives’ and ‘juke boxes’ sufficed to maintain the registration for ‘computer peripheral devices’. Her Honour held that in the circumstances, it was not necessary to demonstrate use of the trade mark in relation to every type of product that may fall under particular description. However, Bennett J also accepted that the term ‘computer peripheral devices’ encompassed a range of other devices for which the relevant trade mark had not been used and that the broad claim for ‘computer peripheral devices’ was liable to be removed, leaving the trade mark registered for the specific peripherals which were expressly claimed elsewhere in the specification. Ultimately however Bennett J exercised discretion under s101(3) not to remove the claim for ‘computer peripheral devices’ due to several case specific factors.
30. The Removal Opponent also cited several other cases. In Trident Seafoods Corporation v Trident Foods Pty Ltd, the Full Court of the Federal Court held that use of a trade mark on ‘prawn flavoured noodle soups’ constituted use of the trade mark in relation to ‘fish products’ in Class 29, although I note the decision to maintain the trade mark for ‘fish products’ did not turn on this finding. In Dr August Wolff GmbH & Co. KG Arzneimittel v Combe International Ltd, Stewart J agreed (citing Pioneer) that to establish use of a mark for a category of goods, it is not necessary to show that the mark was used on every type of product which might come within a particular description. In Goodman Fielder Pte Ltd v Conga Foods Pty Ltd, Burley J (also citing Pioneer), acknowledged that some latitude is permitted in determining whether a trade mark has been used or whether there has been an intention to use in relation to goods.
31. The Removal Applicant argued that the abovementioned cases were not analogous or on a proper interpretation did not support the Removal Opponent’s case. Further, the Removal Applicant cited Murray Goulburn Co-Operative Company Limited v The New South Wales Dairy Corporation where a trade mark registered for ‘dairy products’ was restricted back to the specific subset of those goods for which use had been demonstrated, namely, ‘cheese’ and ‘flavoured milk’.
32. I accept that the use of a trade mark for a subset of a particular category of goods can in some circumstances be sufficient to maintain a registration of a trade mark for the entire category. However, whether this is appropriate will depend on the circumstances of each case. Logically, the more extensive the category in question, the less likely it is to be appropriate to allow a broad claim to remain unrestricted based on use only for some goods within that category. For example, many older trade marks are registered for broad claims such as ‘machines’. Such a claim on its broadest interpretation could include anything from a steam iron to a nuclear reactor. It would be difficult for most registrants to maintain an unrestricted claim for ‘machines’ in the face of a removal application, unless there were very compelling discretionary factors favoring the trade mark owner. Similarly, the maintenance of broad claims for goods such as ‘computer software’ would also need to be considered closely, given the extensive range of different purposes for which software can be used.[11]
[11] [2021] ATMO 132, [28] – [32] (Hearing Officer Knowles)
34. The parties made extensive submissions on this issue, referring to many of the same cases as outlined in Ampac as well as the recent decision of Justice Thawley in Seven Network (Operations) Limited v 7-Eleven Inc,[12] which, in the context of discretion, warns against the risk of fragmentation in the mark.
[12] [2023] FCA 608, [156]-[167].
35. I accept the principles set out in Ampac above. Ultimately, my conclusion is that a service such as ‘educational services’ or ‘educational instruction’ is a service of such broad nature (covering services from early childhood education to highly specialised training services in the corporate context) that it is not appropriate to allow a broad claim to remain unrestricted based on the narrow use demonstrated by the Opponent. This is not a case where fine distinctions need to be drawn, rather it would appear to defeat the purpose of the trade mark system for a trader (say) seeking to obtain registration of a similar mark for advanced technical training services, to be prevented to do so by means of a mark solely used in respect of early childhood education and care services. In this case, fragmentation is not a genuine risk; rather the limitation sought by the Applicant to early childhood education and care services is clear and appropriate in the context of the distinct market that the Opponent trades in.
36. I therefore find that the Opponent has shown use (by the Rise and Shine Group), and intention to use the Trade Mark in respect of (emphasis added):
Class 41: academies (education); conducting of educational courses; education services; educational instruction; educational services; health education; lingual education; musical education services; physical education; physical education instruction; physical health education; provision of education courses; provision of educational courses; sports education services; teaching, all of the above in connection with early childhood education and care
37. I refer to the services listed in paragraphs 31 and 36 above as the (‘Used Services’).
38. I am not satisfied that the Rise and Shine Group has used (and hence the Opponent intended to use) the Trade Mark for the services listed in paragraph 32 not subject to the limitation in paragraph 36 and for the following services (‘Remaining Services’):
Class 41: advisory services relating to education; design of educational courses, examinations and qualifications; dissemination of educational material; educational assessment services; educational consultancy services; electronic publication of information on a wide range of topics, including online and over a global computer network; event management services in relation to the organisation of educational, entertainment, sporting or cultural events; foreign language education services; information relating to education; language teaching; management of education services; management of educational events; organisation of competitions (education or entertainment); organisation of contests (education or entertainment); organisation of teaching activities; primary education services; providing facilities for educational purposes; provision of children's educational services through play groups; provision of educational information; provision of facilities for education; provision of information relating to education; setting of educational standards; weblog (blog) services (online publication of journals or diaries)
Class 43: child minding services
39. I reach this conclusion because the Rise and Shine Group uses the Trade Mark in reference to the curriculum offered at its early childhood care and education centres and hence only uses the Trade Mark in connection with its early childhood care and education centres. It does not offer a child minding service, playgroup service or a primary education service; such services are separate to and different to early childhood care and education centres.
40. The Opponent does not offer services relating to education advice, consulting, provision of facilities, organisation or provision of information to third parties or similar services outlined above. A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. The use of a trade mark for a good or service that is merely ancillary to or an input into the service offered under a trade mark is not use of that mark for the good and service as it is not a good or service offered to an end consumer.[13] Services such as ‘management of educational events’ are provided by the Rise and Shine Group as an input into or an ancillary part of its own early childhood education and care business rather than as a distinct offering under the Trade Mark to third parties. To put it another way, the Rise and Shine Group does not provide the Shine Advantage curriculum to other operators of education centres, nor do they offer advice, consulting or information services under the Trade Mark to parents seeking education for their children; rather they offer early childhood education and care centres under the Trade Mark that contain, as an input or ancillary service, educational material, advice and facilities.
[13] Watermark Restaurant Pty Ltd v The Watermark Hotel Group Pty Ltd (2002) 55 IPR 406, 415 (Hearing Officer Ryan).
41. This logic equally applies to the claim, made by the Opponent, that by reason of the Opponent offering internal training material under the Trade Mark to its own employees for their professional development, that the scope of its business, and hence its use of the Trade Mark, extended into adult education. This is not correct – the provision of training material to a company’s own employee is ancillary use as it is not a good or service offered to the end consumer.
42. I find that the Opponent has failed to satisfy the onus under s 100(1) to show an intention to use or actual use of the Remaining Services.
Registrar’s Discretion
43. 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.[14] In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Court of the Federal Court provided the following observations regarding the discretion under s 101(3):
[14] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2022 Thomson Reuters, [70.2505].
The following propositions are relevant to the exercise of this discretion:
(1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter scope and purpose of Part 9 of the Trade Marks Act.
(2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. …
(3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. …
(4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark.
(5) The range of factors considered in the exercise of the discretion has included whether or not:
(a) there has been abandonment of the mark;
(b) the registered proprietor of the mark still has a residual reputation in the mark;
(c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;
(d) the applicant for removal had entered the market in knowledge of the registered mark;
(e) the registered proprietors were aware of the applicant’s sales under the mark;
(f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[15]
[15] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (emphasis altered) (citations omitted).
44. 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’,[16] 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.[17] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Gummow, 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.[18]
[16] Kowa Co Ltd v Organon [2005] FCA 1282, [92] (Lander J).
[17] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].
[18] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210].
45. In the present case, there is no evidence that the Opponent has ever used the Trade Mark or intends to use the Trade Mark in the future in Australia for any of the Remaining Services. The Opponent has made submissions that I should exercise the discretion on the basis that many of the Remaining Services are similar to the Used Services. I note that were I to remove the services for which there is no evidence of use (the Remaining Services), the Opponent would still retain the protection of the Trade Mark for the Used Services and (both in respect of any opposition or infringement matters) any similar services or closely related goods, which would be expected to prevent any instance of consumer confusion that could arise were, for example, a third party to seek to register a substantially identical mark for services that are similar services to the Used Services for which the Trade Mark remains registered.
46. Accordingly, I am unpersuaded that the removal of the Trade Mark for the Remaining Services would result in consumer confusion or practically impact on the interests of the Opponent in any way. Given the importance of the integrity of the Register I do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of any of the Remaining Services.
Decision
47. The Opponent has partly established its opposition to the removal application. Accordingly, I direct that trade mark registration 2024656 be removed from the Register in respect of all Remaining Services one month from the date of this decision. It will remain registered for the services listed below.
Class 41: academies (education); conducting of educational courses; education services; educational instruction; educational services; health education; lingual education; musical education services; physical education; physical education instruction; physical health education; provision of education courses; provision of educational courses; sports education services; teaching, all of the above in connection with early childhood education and care; kindergartens (nursery schools); kindergarten services (education or entertainment); nursery schools; preschool teaching; preschools (education);
Class 43: day care services for children; day-care centres (day-nurseries); provision of child care centres; provision of day nurseries (other than schools)
Costs
48. Neither party has been entirely successful in respect of the application for removal of trade mark registration 2024656. As such I make no order as to costs.
Nicholas Smith
Hearing Officer
Delegate of the Registrar of Trade Marks
16 October 2023
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