Rob Neely v Vaxxas Pty Ltd

[2018] ATMO 149

TRADE MARKS ACT 1995

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

Re:Opposition by Rob Neely to application under section 92 of the Act by Vaxxas Pty Ltd to remove trade mark number 1440207 (5) - Nanopatch - in the name of Mastitis Management Australia Pty Ltd

DELEGATE:

Iain Campbell Thompson

REPRESENTATION:

Opponent: Self represented

Applicant: Davies Collison Cave – written submissions

DECISION:

2018 ATMO 149

Trade MarksAct1995

Section 96 opposition to application under sections 92(4)(a) and 92(4)(b) for removal of Trade Mark from the Register: Opponent has not shown that Trade Mark was used during the Relevant Period in relation to the Goods.

Opposition to removal not established

Background

1. In these proceedings under the Trade Marks Act 1995 (‘the Act’) Vaxxas Pty Ltd (‘the Removal Applicant’) applied on 2 September 2016 under the provisions of sections 92(4)(a) and 92(4)(b) for the removal from the Register of Trade Marks of the trade mark which appears below:

Registration No:         1440207

Owner:Mastitis Management Australia Pty Ltd1 (‘the Owner’)

Priority Date:             2 August 2011

Goods:Class 5: Vaccines for human use; veterinary vaccines (‘the Goods’)

Trade Mark:               Nanopatch

(‘the Trade Mark’)

1  I note that, according to ASIC records within the Evidence in Answer, Mastitis Management Australia Pty Ltd changed its name to Nanopatch Pty Ltd on 4 April 2017.

1. I will mention now that, as the application for removal (which seeks removal in respect of all of the Goods) was filed on 2 September 2016, the relevant period for the purposes of section 92(4)(b) is the three years ending on 2 August 2016 (‘the Relevant Period’).

2. As allowed by section 96 of the Act, on 9 November 2016, Mr Rob Neely2 (‘the Opponent’) filed a Notice of Intention to Oppose the removal of the Trade Mark.

1. On 6 December 2016 the Opponent filed a Statement of Grounds and Particulars asserting, inter alia, that the Trade Mark had been filed with an intention to use it in good faith and that the Trade Mark had been used during the Relevant Period. I will discuss the Statement of Grounds and Particulars in more detail under the heading ‘Deliberations’, below.

1. Thereafter the opposition process has followed the following timetable:

22 December 2016 – Notice of Intention to Defend filed by the Applicant;

9 April 2017 – Evidence in Support filed by the Opponent –

Declaration of the Opponent made on 7 April 2017 with attachments;

11 July 2017 – Evidence in Answer filed by the Applicant –

Declaration of Natasha Marshall Teoh, Trade Marks Attorney and Lawyer, made on 11 July 2017 with Exhibits NMT-1 to NMT-17;

27  December  2017  –  written  submissions  made  by  the  Applicant’s  then attorneys, DibbsBarker.

1. Both parties have been informed of their right to be heard or to make written submissions. Neither party requested to be heard; the Applicant filed written submissions by its legal representatives at that time DibbsBarker. The Applicant has neither requested to be heard nor filed written submissions (although I note that some of the Opponent’s declaration in Evidence in Support is in the nature of submissions).

1. Now in order to decide the matter, it has been passed to me, as a delegate of the Registrar, for my decision on the written record which is comprised of those materials mentioned in the foregoing paragraphs.

2 I note that because subsection 96(1) provides that ‘any person may oppose an application under subsection 92(1) ...’ it follows that the opponent to the removal of a trade mark does not have to be the owner of the trade mark.

Principles

1. It is convenient to discuss the issues in terms of section 92(4)(b). As the Registrar’s delegate observed in Liliana Forza v Jaimex Nominees Pty Ltd:3

I note also the tendency for the grounds under ss 92(4)(a) and (b) to merge once five years have passed since the filing of an application to register, given an owner’s intention as at the filing date may come to be reflected in the actual use made of the trade mark. Often an analysis of the ground under s 92(4)(a) is otiose in view of any actual use made of a trade mark …

1. I further note that if the opposition to removal under section 92(4)(b) is not established there is no requirement to consider the ground under section 92(4)(a).

1. Concerning the onus in these proceedings, section 100 of the Act relevantly provides:

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

(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

1. A single bona fide use of a trade mark in the Relevant Period may be sufficient to answer an application for removal under subsection 92(4)(b): Woolly Bull Enterprises Pty Ltd v Reynolds.4

3 [2016] ATMO 5 at [9].

4 [2001] FCA 261; 107 FCR 166 at 172.

1. However, where a trade mark owner relies on only one, or a few, instances of alleged use, such acts ought to be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’: Nodoz Trade Mark (‘Nodoz’).5

2. The decision maker may not be persuaded by evidence that is solely from the internal files of the opponent (Nodoz), or of a circumstantial nature: Trina Trade Mark. 6

1. The relevant standard of proof that the Opponent bears is on the balance of probabilities.7 In this regard, section 101 of the Act provides that if ‘the Registrar is satisfied that the grounds on which the application [for removal] was made have been established, the Registrar may decide to remove the trade mark from the Register …’ [Stress added]

1. In Blount Inc v Registrar of Trade Marks8 Branson J observed:

Where the Act requires the Registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy [1965] HCA 46; (1965) 112 CLR 517 at 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.

1. It follows that unless the Opponent evidences ‘convincing proof’ of use of the Trade Mark ‘in the course of trade’:9

1.without   alterations    or    additions   which    substantially     affect     its identity;10

2.during the Relevant Period;

3.in relation to the Goods;

to the satisfaction of the Registrar, the opposition to removal will not be established.

1. Even if the Trade Mark has not been used and opposition to removal has not been established, there remains a discretion for the Registrar to allow the Trade Mark to remain on the Register in respect of the impugned goods if satisfied it is reasonable to do

5 [1962] RPC 1 at 7 per Wilberforce J.

6 [1977] RPC 131.
7 Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599.
8 [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37-241.
9 See section 17 of the Act: What is a trade mark?

10 Subsections 7(1) and 100(3)(b)(i) of the Act apply.

so.  The Opponent again bears the onus of providing reasons as to why the Trade Mark should remain on the Register.

Evidence

1. In his declaration the Opponent states:

Nanopatch Pty Ltd ACN 142 373 359 (Company) formerly known as Mastitis Management Australia Pty Ltd ACN 142 373 359 (MMA) was originally registered as Insulpatch Pty Ltd ACN 142 373 359 on 3 March 2010 to develop patches for Human and Animal use.

On 18 October 2010 Insulpatch Pty Ltd ACN 142 373 359 changed its name with ASIC to Mastitis Management Australia Pty Ltd ACN 142 373 359.

On 19 October 2010 published a website discussing its projects and services under see print copy attached as ‘Annexure 1’

The website information as attached noted that following excellent Proof of Concept results in early 2011 it may use a MMA “Nanopatch” for treatment of Bovine Mastitis.

1. I note that the webpage referred to contains a link to the webpage of Phosphagenics Ltd’s newsletter dated 1 February 2013 and which refers to ‘MMA’s Nanopatch’ in the following terms:

Since achieving the outstanding proof of concept trial results in early 2011, MMA has consulted globally with industry and believe the application of our technology by Intra-Mammary Infusion (IMI) and or by MMA's Nanopatch® IP will be the best way to apply this commercially in the bovine field. We are now working with large commercial players to include this technology prophylactically by adding it directly into feed rations to protect and enhance herd resistance to Mastitis.

1. Elsewhere on the same page within Annexure 1 is the following information:

Our scope recently has been to test the relationship of a patented delivery technology utilising Tocopheryl Phosphates (known as TPM™), developed by an internationally emerging Melbourne biotech company, Phosphagenics Limited. Along with naturally occurring Vitamins and Minerals for use in the Dairy industry. http:/www phosphagenics com/ [sic]

1. Annexure 2 to the Opponent’s declaration contains the following:

"@mastitisaust: Important meeting coming up for MMAs Nanopatch technology with some Bovine Vets this week, our commercial applications for peptides coming .. "

And

"mmm excellent news gc ... remind me kind sir, the nanopatch was to deliver
... ?"

1. The Opponent continues:

On 3 March 2011 MMA entered an agreement with Phosphagenics Ltd as announced to the ASX. Phosphagenics Ltd is a technology expert in the research and development and manufacture of human and animal patch’s [sic] for the transdermal application of Active Pharmaceutical Ingredients. (API’s) [sic]

MMA has at all times been working with prospective licensees for the NANOPATCH®. However, as we are a B2B business it is not at all times obvious that we are ‘selling’ something as marketing is not an important component of the process, rather direct contact.

However we have at all times used the website australia.com and noted our NANOPATCH® and its use. During 2013 MMA entered into a Research and Development Agreement with Veterinary Research Australia Pty Ltd (VRA) to allow VRA to use NANOPATCH® IP whilst developing its Racehorse technology.

In December 2013 MMA entered into a binding agreement with the pre- incorporated IAH to allow use of all technology, licences and trademarks. During May 2014 MMA was taken over by Integrated Animal Health Pty Ltd (IAH) and assumed control of the IP owned by MMA.

MMA’s use was also noted on share trading Website known as Hotcopper on two occasions Annexure 2 and Annexure 3 on 10 April 2014 and 10 May 2014 respectively.

1. The Hotcopper website has two  references to MMA and the Trade Mark the most revealing of which is:

Since achieving the outstanding proof of concept trial results in early 2011, MMA has consulted globally with industry and believe the application of our technology by IntraMammary Infusion (IMI) and or by MMA's Nanopatch® IP will be the best way to apply this commercially in the bovine field.

1. The Opponent continues:

IAH is a b2b [sic] company dealing with the worlds [sic] largest Animal Health and  pharmaceutical companies.  They develop animal health medicines  from

human health solutions in a unique 8 step process that takes a technology from inventors and universities and creates a product not unlike what the Applicant for the non-use of our trademark does, Vaxxas. IAH goes through all the commercialisation steps from testing to proof of concept to packaging and branding. Please see 3 minute video of process - currently in the Commercial Proof of Concept stage and IAH

are in late stage confidential sublicense discussions with multinationals as to the licencing of the product.

1. I note that the YouTube® video to which I am directed was uploaded on 28 February 2017, after the Relevant Period, does not mention the Trade Mark, and contains the address of the website of Integrated Animal Health LLC and/or Integrated Animal Health Inc ( which website, apparently, no longer exists.

1. Returning to the Opponent’s declaration, he states:

As IAH is a b2b [sic] business it is not readily apparent where the NANOPATCH® branding is being used as it is not readily advertised as IAH is b2b. [sic] Nonetheless it is used weekly in communications and will become a globally recognised Australian Trademark but more likely recognised by vets and doctors rather than the general public.

1. In the Evidence in Answer Ms Teoh attests to two main areas of the Applicant’s concerns, these being its perceptions of the disparate nature of the Goods and those in relation to which the Opponent has asserted use of the Trade Mark (‘the Actual Goods’) and (more generally) uncertainty as to the nature of Actual Goods (and whether these are, in fact, the same as the Goods).  Ms Teoh states of her researches:

I referred to the Macquarie Dictionary Sixth Edition for the meaning of 'vaccine', which contains the following definitions:

1.   the virus of cowpox, obtained from the vesicles of an affected cow or person, and used in vaccination against smallpox. 2. The modified virus of any of various other diseases, used for preventive inoculation. 3. relating to vaccinia or to vaccination. 4. of, relating to, or derived from cows.

I undertook research on the Internet using the free online encyclopaedia, Wikipedia, for the term "vaccine". Shown to me and marked "Exhibit NMT-3" are print outs of the information revealed by the aforementioned research.

1. Ms Teoh also attests at some length as to her perception that the goods in relation to which the Opponent has asserted use of the Trade Mark may be additives to stock feeds. Ms Teoh analyses the likely nature of the Actual Goods in terms of numerous entries in

the International (Nice) Classification of Goods and Services. In terms of the reasons for my decision, I need not dwell on this evidence at any length except to observe, it underscores some uncertainty as to the nature of the Actual Goods and whether these are the same as the Goods.

1. Ms Teoh also remarks upon the reference to ‘polypeptides’ within Annexure 2 to the Opponent’s declaration in the context, ‘Important meeting coming up for MMAs Nanopatch technology with some Bovine Vets this week, our commercial applications for  peptides  coming  …’    However,  while  Ms  Teoh  declares  as  to  the  nature  of

   polypeptides at some length, as some polypeptides may be used as vaccines,11  what I

   take from this evidence is that it might actually cast light upon the Actual Goods as being a delivery system or device for vaccines rather than the vaccines themselves (and hence the references to trialing formulations as additives to stock feeds and subsequently administering them via the Nanopatch trade marked goods).

Discussion

1. Section 92 of the Act relevantly provides:

92  Application for removal of trade mark from Register etc.

(1)Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register.

(2)The application:

(a)must be in accordance with the regulations; and

(b)may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

(3)An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register.

Note:       For prescribed court see section 190.

(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

11 See, for example, 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;

(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.

Note 1:     For file and month see section 6.

Note2:     If non-use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

1. I note, initially, that the Registrar has not been informed of an action concerning the Trade Mark in a prescribed court.

Statement of Grounds and Particulars

1. In his Statement of Grounds and Particulars the Opponent asserts:

Nanopatch is the name of a small patch placed near a cow udder that contains concentrates of vital nutrients or Active Pharmaceutical Ingredients (API's) to reduce and inhibit mastitis in dairy cows.

This patented technology will reduce antibiotic usage, produce more milk and save our dairy farmers a significant amount of money.

Nanopatch was filed for trademark registration on 2 August 2011 by Mastitis Management Pty Ltd.

On 5 April 2012 Nanopatch was officially registered. Steps to conduct Nanopatch trials commenced.

Initial trials had to be conducted through an oral method before an intra mammary trial could be done. It was the safest form of trial to research the effects that the new technology had on the cows. The oral trials were conducted from September 2012 to October 2012 in conjunction with an Australian based biotech company.

Initial trials to test the intramammary technology of the Nano patch were conducted from December 2012 through to May 2013 in conjunction with an Australian based biotech company and the USDA.

Being a start-up company our funds at this point could either be allocated to conducting further Nanopatch trials or bring an oral based product to market which requires much less protocol and budget. With the sales from the oral based product we can then conduct further trials for Nanopatch once we get cash flow positive.

Mastitis Management Australia Pty Ltd and Veterinary Research Australia amalgamated in December 2013 and incorporated in February 2014 to become Integrated Animal Health Pty Ltd which is now a global company.12

In March 2014, the oral dairy product was launched to market on a trial basis to farms in VIC and SA with much success. The product was officially available to market from April 2014.

The company now has a steady pipeline of ongoing research and development projects with Nano patch [sic] being one of them.

Projects are assessed according to budget and value to market.

Nanopatch is in the pipeline for further trials to hopefully be market ready by

2017.

[Bolding in original]

1. In terms of my outline of the principles involved, my considerations come under the headings concerning use of the Trade Mark in the course of trade:

1.without alterations or additions which substantially affect its identity;

2.during the Relevant Period;

3.in relation to the Goods;

In the course of Trade/Alterations or additions

1. As the references to the Trade Mark within the Annexures are third party references, it is difficult to conclude that the Owner of the Trade Mark has used the Trade Mark in the course of trade without alterations or additions which substantially affect its identity (or at all).

1. While the Opponent refers to separate agreements with Phosphagenics Ltd, VRA, and IAH,13 these agreements are not in evidence.

12 I note ASIC records show that Integrated Animal Health Pty Ltd ACN 168 139 982 is in liquidation from 21 June 2017 and, moreover, that Mastitis Management Australia Pty Ltd changed its name to Nanopatch Pty Ltd on 4 April 2017 which is still currently active. Without further explanation from the Opponent, it is difficult to reconcile these claims.

1. The probity of the evidence which the Opponent states supports the evidence of use of the Trade Mark, with or without alterations which do not substantially affect its identity, is thus not such that much weight can be placed upon it.

The Relevant Period

1. As the claim that the Owner of the Trade Mark entered into a Research and Development Agreement with VRA in 2013 is not specific as to the date on which the Agreement was executed (and the Agreement is not in evidence) this could not contribute to either claims of use of the Trade Mark during the Relevant Period by the Owner or go to the exercise of the Registrar’s discretion.

1. One claim for use of the Trade Mark during the Relevant Period lies in the Opponent’s statement that:

In December 2013 MMA entered into a binding agreement with the pre- incorporated IAH to allow use of all technology, licences and trademarks. During May 2014 MMA was taken over by Integrated Animal Health Pty Ltd (IAH) and assumed control of the IP owned by MMA.

1. However there are no exhibits which support this claim. Further, if MMA was ‘taken over’ by IAH, it is not clear what happened to all the ‘technology, licences and trademarks’. It is difficult to apprehend how these arrangements could constitute use of the Trade Mark – or by whom. I note that the Opponent mentions Caravillas Trade Mark [1982] RPC 425 concerning the hire or lease of goods in this regard; however, the Opponent has not supported this submission with documentation which corroborates this claim nor has he made it plain that it was the Goods that were hired or leased rather than the technical know-how involved (or its further development). Further, on the face of it, the lease or hire of an expendable, such as a vaccine, appears to be at odds with the nature of the Goods.

1. There are also in the Opponent’s evidence mentions of the Trade Mark on the Hotcopper website within the Relevant Period. However, these appear to be third party references to the Trade Mark and are not, apparently, use of the Trade Mark in the course of trade

13  It not being clear from the evidence whether the IAH referred to by the Opponent is Integrated Animal Health Pty Ltd or Integrated Animal Health Inc and/or Integrated Animal Health LLC

by the Owner in order to distinguish the Goods.    Further, there is nothing concrete within these references as to what the goods involved might be.

The Goods

1. In my consideration, in attempting to ascertain the nature of the Actual Goods, the Opponent’s evidence may be read in conjunction with the Statement of Grounds and Particulars which states:

Nanopatch is the name of a small patch placed near a cow udder that contains concentrates of vital nutrients or Active Pharmaceutical Ingredients (API's) to reduce and inhibit mastitis in dairy cows.

[…]

In March 2014, the oral dairy product was launched to market on a trial basis to farms in VIC and SA with much success. The product was officially available to market from April 2014.

The company now has a steady pipeline of ongoing research and development projects with [Nanopatch] being one of them.

1. When the likely nature of the Actual Goods is considered in conjunction with the above, and the reference in the Opponent’s declaration to a ‘patented delivery technology’, it appears to me that the Actual Goods are more likely to be some form of vaccine delivery, or drug delivery, device than they are to be the vaccines which constitute the Goods. It is most probable, in my view, that the Actual Goods are a patch onto which some preparation may be placed, or impregnated, for the treatment of mastitis in cows. Such goods are not vaccines but are the means for delivering them.

1. Alternatively put: Opponent has not established what the Actual Goods are; accordingly, it is impossible to determine whether the Actual Goods are the same as the Goods.

1. Accordingly, the Opponent has not established that the Owner used the Trade Mark in relation to the Goods in relation to which the application for removal relates.

1. It follows in view of the foregoing discussion that the Opponent has not established his opposition to the application for removal of the Trade Mark from the Register.

Discretion

1. Section 101(3) provides:

101  Determination of opposed application—general

[…]

(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.

1. In Pioneer Computers Australia Pty Ltd v Pioneer KK14 Bennett J stated:

169.     In E & J Gallo at [202]-[203], Flick J stated that the following factors set out by Falconer J in Hermes Trade Mark [1982] RPC 425 were of assistance in considering the exercise of the discretion:

o   there had been no abandonment of the trade mark;

o   the registered proprietors of the mark still had a residual reputation in the mark;

o   there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;

o   the applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark;

o   the registered proprietors were not aware of the applicant’s sales under the mark.

1. In considering the above factors, the evidence before me is such that the Registrar could not be satisfied that it is appropriate to exercise her discretion. There is no evidence before me which goes to those factors and the evidence does not put forward any other circumstance which suggests that it may be appropriate for the Registrar to exercise the discretion afforded by section 101(3) of the Act.

1. I note also the seeming dichotomy between the Actual Goods and the Goods and that the Opponent has made no submissions in relation to the exercise of the Registrar’s discretion.

Decision

1. Section 101 of the Act relevantly provides:

101  Determination 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

14 [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354 at [169].

(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.

1. The ground on which the application was made has been established as the Opponent has not established his opposition to the removal of the Trade Mark from the Register. I decide therefore that registration 1440207 be removed from the Register after one month from the date of this decision. In the event of an appeal from this decision, the Trade Mark will not be removed from the Register until the appeal has been discontinued or dismissed, or in the event of a decision from the court, the registration will be subject to that order.

Costs

1. The Applicant requested its costs in the event that it was successful in these proceedings and, as the Opponent has not established his opposition, I award costs against the Opponent at the official scale set out in Schedule 8 of the Trade Marks Regulations 1995.

Iain Thompson Hearing Officer
Trade Marks Hearings 19 September 2018