Scott-Dibben Pty Limited v Canterbury District Health Board

[2016] ATMO 3

TRADE MARKS ACT 1995

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

Re:Opposition by Scott Dibben Pty Ltd to application by Canterbury District Health Board for removal of trade mark registration 1012285 (44) - HEALTHPATH; HEALTH PATHWAYS - (series) in the name of Scott-Dibben Pty Ltd

Delegate:

Michael Kirov

Representation:

Opponent: Hamish Bevan of Counsel instructed by Burgess Lawyers

Applicant: Shauna Ross of Counsel instructed by Joanna Lee of Sparke Helmore Lawyers

Decision:

2016 ATMO 3

Opposition to application based on ss 92(4)(a) and (b): No relevant use or obstacles to use shown. No reason for exercise of discretion in Opponent’s favour. Trade marks to be removed.

Background

1. Scott-Dibben Pty Ltd (“the Opponent”) is recorded[1] as the registered owner of trade mark registration 1012285 covering a series of two trade marks, relevant details of which are as follows:

Trade mark number:     1012285

Registered from:  23 July 2004

Services:Class 44: Medical services being the delivery of medically supervised disease state management programs

Trade marks:  HEALTHPATH and HEALTH PATHWAYS

[1] While nothing turns on the apparent inaccuracy in its recordal on the Trade Marks Register, according to the Australian Securities and Investments Commission’s records the opponent company, (ACN 003 771 846), does not have, and has never had, a dash between the names “Scott” and “Dibben”.

1. Hereafter I will for convenience refer to the two trade marks collectively as “the Trade Marks” and to each of them individually, where necessary, as “the HEALTHPATH mark” and “the HEALTH PATHWAYS mark”.  I will refer to the services covered by the registration as “the Services”.

2. On 18 July 2013 Canterbury District Health Board, “a Crown Entity established under the New Zealand Public Health and Disability Act 2000”[2] (“the Removal Applicant”), filed an application based on sections 92(4)(a) and (b) of the Trade Marks Act 1995 (“the Act”) seeking removal of the Trade Marks from the Register, alleging in the case of the s 92(4)(b) ground that the Trade Marks were not used in good faith in relation to any of the Services during the three year period ending on 18 June 2013 (“the Relevant Period”).

   [2] As described in the Removal Applicant’s evidence.

3. On 9 October 2013 the Opponent filed a Notice of Intention to Oppose removal, followed by a Statement of Grounds and Particulars (“SGP”) on 31 October 2013.  The SGP, (which I note renders the HEALTH PATHWAYS mark inaccurately as one word), is reproduced below:

   1. [The Opponent] is the owner of [registration] 1012285 HEALTHPATH; HEALTHPATHWAYS [sic] in class 44, namely “medical services being the delivery of medically supervised disease state management programs.”

   2. The Registered Trade Mark is a “word series” within the meaning of Sections 51 and 51A of the [Act].  The only distinction between the words “Healthpath” and “Healthpathways” is that the first is singular and the second plural of the same trademark name.  They have the same meaning.

   3. For many years and up to twelve (12) months prior to the registration of the trademark [the Opponent] has expended substantial efforts in and about the development of technology, software and IT based programs.  [The Opponent’s] expenditure in this regard has exceeded $1.5 million.  Those programs are promoted under and by reference to the name “Healthpath”.  [The Opponent] previously used the name Helathpathways [sic] in relation to these programs.

   4. [The Opponent] is currently engaged in further software development of its IT based programs which will involve expenditure in the vicinity of a further $100,000.00 - $150,000.00 over the next 6-8 months which involves the re-adaption and re-coding of its IT technology, adapting new functionality to the software and extending the program packages.  Such software will utilise both the singular and plural terms of its registered trademark - Healthpath and Healthpathways [sic].

   5. Since approximately mid 2003 [the Opponent] has been involved in the ongoing marketing of its technology and IT based programs and has developed an acknowledged market presence and expertise in and around the trademark names Healthpath and Healthpathways [sic] within the health and medical industries.

   6. [The Opponent] has developed further IT based programs including a “Home Medication Reviewers Program” based upon its trademark names by way of an additional extension to its already well-established IT based programs.

   7. [The Opponent] has been invited as a leader in its field to exhibit at the Pharmacy Trade Fairs throughout Australia since 2006.

   8. [The Opponent] has produced and distributed a significant quantity of material relating to its IT based health and related programs throughout the community via established pharmacy outlets.

   9. [The Opponent] proposes to continue to expand and develop its various health and related service programs and to continue developing its intellectual technology and software components at substantial on-going cost to the company.

4. The Removal Applicant filed a Notice of Intention to Defend on 15 November 2013.

5. The Opponent’s evidence in support consists of a Statutory Declaration made on 14 February 2014 by Philip John Dibben, with Exhibits PJD-1 to PJD-56[3] (“Dibben”).  Mr Dibben is the Opponent’s sole Director and shareholder and its Company Secretary.

   [3] Excluding, by agreement of the parties at the hearing, Exhibit PJD-25, which was not uploaded to IP Australia’s electronic evidence database, Objective Connect.

6. The Removal Applicant’s evidence in answer consists of a Statutory Declaration made on 21 August 2014 by Gregory Michael Brogden, with Exhibits GMB-1 to GMB-5 (“Brogden”).  Mr Brogden is the Removal Applicant’s “Corporate Solicitor”, a position he has held since 2001.

7. The Opponent did not file any evidence in reply.

8. I heard the matter in Sydney on 10 August 2015 as a delegate of the Registrar of Trade Marks.  Hamish Bevan of Counsel, instructed by the firm Burgess Lawyers, appeared for the Opponent.  Mr Bevan’s oral submissions were supplemented by written submissions filed with IP Australia on 30 July, some days after the date I had directed.  Shauna Ross of Counsel, instructed by Joanna Lee of Sparke Helmore Lawyers, appeared for the Removal Applicant.  Ms Ross’ oral submissions were supplemented by written submissions filed with IP Australia and emailed to the Opponent’s attorneys and me on 7 August in accordance with my earlier directions.

The Law

1. Insofar as relevant to this matter, section 92 of the Act is reproduced below:

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 aggrieved 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
(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;

(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.

Note 2:  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 s.102 on the registration of the trade mark so that its registration does not extend to that place or export market.

(5) …

1. Section 93(2) of the Act specifies that an application under s 92(4)(b) “may not be made before a period of 5 years has passed from the filing date in respect of the application for the registration of the trade mark”. This requirement is clearly satisfied here since the Trade Marks have been registered since 2004. Given this, it is not necessary to consider the Removal Applicant’s allegation based on s 92(4)(a), since in this case ss 92(4)(a) and (b) effectively merge. That is to say, if I am satisfied that there has been no use, or no use in good faith, of the Trade Marks during the Relevant Period, (being a necessary, but not sufficient, requirement for removal under s 92(4)(a)), then the removal application would in principle[4] succeed under s 92(4)(b) on that basis alone in any event. Accordingly, only the application for removal based on s 92(4)(b) is discussed in this decision.

   [4] Absent any relevant “obstacles” to excuse the lack of use, or cogent reasons for favourable exercise of the Registrar’s discretion under s 101(3) and (4) of the Act, neither of which is applicable in this case.

2. Sections 100(1)(c) and 100(3) of the Act indicate that the Opponent bears the onus of rebutting the allegation made under s 92(4)(b), either by establishing that the Trade Marks (or, as discussed below, at least one of the Trade Marks with additions or alterations not substantially affecting its identity) was/were used in good faith during the Relevant Period, or that there was a relevant obstacle to use. I proceed on the basis that the standard of proof required is on the balance of probabilities.[5]

   [5] Following Gyles J’s approach in Pfizer Products Inc v Karam (2006) 70 IPR 599 with respect to oppositions under s 52 of the Act. See also the recent decision of the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 (4 November 2015) at [132]-[133] affirming Gyles J’s approach.

3. In this case the Opponent’s sole Director, Phillip Dibben, says in his declaration that the Opponent “licensed” a company named Healthpath Pty Limited (“Healthpath”, of which Mr Dibben is also a Director)[6] “to use and utilize the Registered Trade Mark” (defined earlier in the declaration as referring to both of the Trade Marks) in connection with a “Weight Loss Program” he had developed. In this regard “Note 1” to s 100(1) states:

   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)).

   [6] Healthpath was originally incorporated on 7 November 1994 under a different name.  Recordal of the change of name to Healthpath Pty Limited was made on 29 November 2004.

4. As will be seen, both ss 7(1) and (3) were relevant to the parties’ submissions and both are accordingly set out below:

   (1) If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

   (2) …

   (3) An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.

   (4) …

   (5) …

5. Section 8 of the Act states:

Definitions of authorised user and authorised use

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

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

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

(a) dealt with or provided in the course of trade by another person; and
(b) in relation to which the trade mark is used;

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

(4) If:

(a) a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and
(b) the owner of the trade mark exercises financial control over the other person's relevant trading activities;

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

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

The Relevance of there being a Series of Registered Marks

1. The fact that registration 1012285 covers a series of two trade marks was also relevant to the parties’ submissions, the particular provision of the Act dealing with this being s 51(1). As both Counsel noted, s 51(1) was amended following registration of the Trade Marks by the Trade Marks Amendment Act 2006, with, inter alia, the limitation to series applications covering similar goods or services in a single class removed and former s 51(1)(d) repealed in its entirety. I agree with Mr Bevan’s submission that the original section remains relevant in this case given item 72 in Part 2 of Schedule 1 of the amending legislation specifies that the “amendments…apply to applications for registration made after the commencement of [the amending legislation].” Accordingly s 51(1) as it stood before the 2006 amendments is set out below:

Application--series of trade marks

51(1) A person may make a single application under subsection 27(1) for the registration of 2 or more trade marks in respect of similar goods or similar services within a single class if the trade marks resemble each other in material particulars and differ only in respect of one or more of the following matters:

(a) statements or representations as to the goods or services in relation to        which the trade marks are used or are intended to be used;

(b) statements or representations as to number, price, quality or names of       places;

(c) the colour of any part of the trade mark;

(d) any matter that is not inherently adapted to distinguish the goods or           services and does not substantially affect the identity of the trade marks.

1. Mr Bevan submitted that on the face of it the Trade Marks were considered to qualify as a series pursuant to (now repealed) s 51(1)(d), that is on the basis that the element PATH was not “inherently adapted to distinguish” the Services and thus that its inclusion in the HEALTH PATHWAYS mark did “not substantially affect the identity of” the Trade Marks. He emphasized that the registration must be assumed to be valid and noted that:

   The Applicant does not challenge the validity of that registration or seek to revoke it.  Rather, the Applicant chooses to rely on the non-use provisions in Pt 9 and seeks removal of the registration.  That is the only application that arises for determination.

2. It followed, he submitted, that it was sufficient for the Opponent to meet its s 100 onus with respect to one only of the Trade Marks, in which case “the application for removal [in its entirety] must be dismissed.” In this regard he noted that he was unaware of any “authority for the proposition that a non-use application may be made with respect to part only of a registration for a series mark” and that, in any event, the Removal Application filed in the present matter by its terms challenges “the whole of the registration” rather than one or both of the Trade Marks specifically.

3. For her part, Ms Ross observed there was no evidence before me to show the Trade Marks were registered pursuant to s 51(1)(d). In any case, she submitted, notwithstanding the subject application was based on non-use rather than being a challenge to the validity of the registration per se, “the ‘use’ in evidence must still be viewed against the current test[7] in [s 100 of the Act] of use of a ‘trade mark with additions or alterations not substantially affecting its identity’.”  In this regard, she reasoned, the Trade Marks were not “substantially identical” according to Windeyer J’s well known and generally accepted test in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd[8] and thus that if the Opponent could only establish use of one of the Trade Marks in relation to the Services during the Relevant Period this would not be sufficient to save the other mark in the series from removal for non-use.

   [7] Section 100 was not in fact amended in any way by the Trade Marks Amendment Act 2006.

   [8] (1963) 109 CLR 407 at 414.

4. This issue might in principle be relevant in the circumstances of the present matter since the Opponent does not in fact claim in its evidence to have used, or to have authorized use of, the HEALTH PATHWAYS mark during the Relevant Period (or at all since applying to register it).  Rather, its opposition is based upon the claimed authorized use by Healthpath of the HEALTHPATH mark only.

5. That said, it is not necessary to examine the parties’ submissions concerning the interplay of s 51 and s 100 in detail in this decision since, as discussed below, I am not satisfied that the Opponent has met its onus under s 100 with respect to the HEALTHPATH mark in any case.

The Evidence

The Opponent’s Evidence

1. As mentioned, the Opponent’s evidence consists of a Statutory Declaration by Philip John Dibben, the Opponent’s sole Director and shareholder and its Company Secretary.  Mr Dibben is also one of two Directors and one of two shareholders of Healthpath, the company Mr Dibben says the Opponent “has licensed” to use the HEALTHPATH mark.  Mr Dibben does not say when, or for how long, this license commenced or was intended to endure.  There is no written license in evidence nor, I assume, was there a written license at all, since Mr Dibben does not refer to one in his declaration.  According to the records of the Australian Securities and Investments Commission provided by Mr Dibben, as at 26 March 2013 both the Opponent and Healthpath shared the same address in a Westfield shopping centre in Kotara (a suburb of Newcastle) NSW as their “principal place of business”, from which address Mr Dibben also operates a retail Pharmacy (“the Kotara pharmacy”).

2. Before describing Mr Dibben’s evidence in detail it is convenient to mention that, given its nature and content, Ms Ross submitted the Opponent had not met its onus under s 100 and thus that its opposition must fail for the following reasons:

   (a) Authorised use: Any claimed use of the HEALTHPATH mark was neither by the registered owner, nor was it “authorised use” as contemplated by s 8 of the Act;

   (b) Services: Any claimed use of the HEALTHPATH mark during the Relevant Period was not in relation to the Services;

   (c) Relevant Period: Any use of the HEALTHPATH mark claimed during the Relevant Period was merely asserted and not otherwise substantiated; and

   (d) Actual Marks Used: Most of the claimed use of “the HEALTHPATH mark” in evidence was in fact of the mark “with additions or alterations that … substantially affect [its] identity, being, variously, the marks:

   (“Composite Mark 1”)  (“Composite Mark 2”)

   (“Composite Mark 3”)  (“Composite Mark 4”)

   Powered by Healthpath  

   (“Composite Mark 5”)  (“Composite Mark 6”)

1. The flavour of Mr Dibben’s evidence bearing on claimed use of the HEALTHPATH mark can be seen from the following extracts.  I understand that his references to the HEALTH PATHWAYS mark, (of which, as mentioned, no use is claimed), are presumably included in order to confirm the Opponent’s intention to use both of the Trade Marks as at the 23 July 2004 filing date of the registration:

   3. In early 2004 I decided to replace an existing Weight Loss Program which was being promoted through my Pharmacy at Kotara with a Weight Loss Program of my own creation.  This Weight Loss Program was to be marketed under the name “Healthpath” or “Health Pathways” and would be initially trialled in 3 selected pharmacy outlets before being promoted throughout the Pharmacy Industry.  [The Opponent] financed the program and was the owner of the names Healthpath and Healthpathways as at the date of registration and thereafter.

   …

   6. [The Opponent] has licensed Healthpath to market, develop, expand and license the initial concept of the Weight Loss Program and subsequent associated programs and for that purpose use and utilise the [HEALTHPATH mark].

   7. The initial concept of “Healthpath” was to create a weight loss program to be supported and managed within pharmacies so as to assist members of the public to achieve a pathway to improved health.  The initial program included basic health screening and pathology which was assessed by a dietician and an endocrinologist leading to health recommendations including calorie controlled meal plans and exercise regimes all supported by ongoing professional management assistance.  In 2005 a “Vision and Mission Statement” was created a copy of which is attached and marked PJD-4.  This Statement was prepared in 2005, is still in place, and has been continually distributed to all participating pharmacies and their clients.  Also attached and marked PJD-5 is a copy of the Healthpath Training Program.  This Program was created in October 2004 and was utilised and distributed in the course of training participating pharmacies.  It is still in use in its current format.

   8. The program was trialled and tested in early 2005 through the participation of 3 local pharmacies namely, [the Kotara pharmacy], Chemistworks of Glendale and Grices Pharmacy of Greenhills.  The [HEALTHPATH mark] was chosen as the most user-friendly wording for the purpose of commercial publication and use and the most customer-friendly wording from the point of view of advertising and promotion.

   …

   10. The concept and philosophy giving rise to the business was an endeavour to create a user-friendly mechanism for pharmacies as a destination for weight loss programs (and other subsequent associated health programs) that would not only be manageable but also sustainable over the long term.  It was proposed that information would be accessible to the customer (with the customers consent) to the pharmacy, their general practitioner and other relevant health professionals, ultimately via the means of a web based system.

   11. At the time of the introduction of the Healthpath weight loss program to the industry during 2005, initial advertising was placed with local newspapers.  Interested customers were subsequently contacted by telephone to arrange suitable appointments at their nearest participating pharmacy.  The customers were ably supported by trained pharmacy staff and this enabled the pharmacy to promote and support their relationship with their customers throughout the period of the weight loss program.  An ongoing relationship extended as customers participated in additional module programs which were added to the Health Pathways [sic] system.

   12. From 2004 until 2008, Healthpath managed the placement of print media advertisements for participating Pharmacies.  The advertisements were distributed amongst attendants at all annual NSW Pharmacy Guild Trade Shows and APP Pharmacy Expo Conferences.  Examples of this advertising [are] attached and marked PJD-6.  This advertising was distributed amongst participants at the Trade Fair and forwarded to participating pharmacies and their clients.  Its distribution has continued to the present day.

   13. Healthpath ultimately developed website functionality, including an appointment book and database and undertook all in-store training and support both at initial setup and throughout the entire period of the customers programs. The programs developed by Healthpath include:-

   (a) The weight and health program;

   (b) The blood pressure program; and

   (c) The baby program.

   14. In the course of the program development, various health related documentation was prepared and attached are the following:-

   (a) Participation and Confidentiality Agreement marked PJD-7 which was distributed to participating pharmacies from early 2005 to the present time;

   (b) General Weight Questionnaire marked PJD-8 which was distributed to participating pharmacies and their clients from June 2005 to the present time;

   (c) General Blood Pressure Questionnaire marked PJD-9 which was distributed to participating pharmacies and their clients from June 2005 to the present time;

   (d) General Baby Questionnaire marked PJD-10 which was distributed to participating pharmacies and their clients from September 2007 to the present time;

   (e) Weight Loss Issues marked PJD-11 which was distributed to participating pharmacies and their clients from September 2005 to the present time;

   (f) Healthpath Consulting Room Panels Headers, Postcards and Passport Amends marked PJD-12 which was distributed to participating pharmacies and their clients from September 2005 to the present time;

   (g) Lose Weight - Terms and Conditions (General) marked PJD-13 which was distributed to participating pharmacies and their clients from September 2007 to the present time;

   (h) Lose Weight - Terms and Conditions (Options 1 and 2) marked PJD-14 which was distributed to participating pharmacies and their clients from April 2008 to the present time;

   (i) Lose Weight - Terms and Conditions (Options 3 and 4) marked PJD-15 which was distributed to participating pharmacies and their clients from April 2008 to the present time;

   (j) Terms and Conditions - Baby Program marked PJD-16 which was distributed to participating pharmacies and their clients from April 2008 to the present time; and

   (k) Terms and Conditions- Blood Pressure Program marked PJD-17 which was distributed to participating pharmacies and their clients from April 2008 to the present time.

2. Mr Dibben goes on to name nine “participating Pharmacies…which have adopted the Health [sic] Program” but does not say when they did so or whether any was involved during the Relevant Period.  He does attach “a copy of the Pharmacy Training Program”, which “was originally prepared in October 2004 and distributed to each of the participating pharmacies.” He also attaches “a copy of the Pharmacy In House Training Manual which was presented by way of a PowerPoint presentation to each of the participating pharmacies”, which he says “was created in November 2006 and is used to the present day.”

3. Mr Dibben also attaches copies of some 13 further documents he says were “provided to the participating pharmacies.”  In each case he says the (apparently identical) documentation in question was distributed from dates in 2005, 2006 or 2007 “to the present time.”

4. It is convenient here to note that Ms Ross was very critical of the fact that Mr Dibben either does not say when various, apparently significant, actions took place (such as when Healthpath was licensed or when it “developed website functionality”, to name but two), or he otherwise simply refers to documents or actions undertaken or produced during the years 2004 to 2008 and adds phrases such as these being “still in place”, or being “continued to the present day”, or used “to the present time” or “to date” or similar.  Indeed, as highlighted in the Removal Applicant’s evidence in answer, with the exception of Annexure PJD 7 (to which I will refer in due course), all of the more that 50 documents annexed to Dibben are either undated or are dated well before the Relevant Period.  It is thus difficult to determine with any certainty from the information and attachments in question whether the HEALTHPATH mark was actually used in relation to the Services from mid-2010 to mid-2013, being the particular period of interest in these proceedings.

5. Moreover, Mr Dibben’s unsupported claims that the annexed documents have all been used “to the present time” (or similar) are at times difficult to reconcile with their content.  By way of example, the claim sits somewhat awkwardly with the statement in the document forming Annexure PJD-27 (indicated to be a list of financial and other benefits to a pharmacy should it adopt the “program”), that “Over time pharmacy assistants will be provided with training in modules which will become part of Certificate IV and a Diploma level.”  Although the document forming PJD-27 has apparently been distributed since 2005, I note that nowhere in his evidence does Mr Dibben suggest any such training was subsequently arranged.

6. I observe in passing that, like most of the documents annexed to Dibben, the one page document contained in Annexure PJD-27 features in its header one of the composite marks set out in paragraph 23 above (Composite Mark 4 in this case) rather than the HEALTHPATH mark per se.  The word “Healthpath” does appear twice elsewhere in the copy, (“$400 of this goes to Healthpath” and “With the aid of the Healthpath appointment book…”), but these are on the face of it references to the company Healthpath Pty Ltd rather than use as a trade mark for the Services.  I will return to this issue in due course in the discussion below.

7. Annexure PJD-56, said by Mr Dibben to be an example of pamphlet advertising “created in March 2006 and distributed … to participating pharmacies and potential clients from March 2006 to the present time”, likewise states “Pharmacy assistants will be provided with training in modules which will become part of Certificate IV and at Diploma level.”  I would make the identical observation in relation to this annexure as for Annexure PJD-27.  I note too that, like Annexure PJD-27, Annexure PJD-56 also features Composite Mark 4 rather than the HEALTHPATH mark per se.  The term “Healthpath™” does appear in the pamphlet, but is used merely in copy such as, “Healthpath™ will be able to assist you to obtain any of the above equipment” and “PSLnet® provides the secure messaging between Healthpath™, our service providers and your pharmacy…”, that is as apparent shorthand for the name Healthpath Pty Limited.

8. Annexure PJD-56 is a six page colour pamphlet containing headings such as “WHAT DOES YOUR PHARMACY REQUIRE TO BECOME A HEALTHPATH® PHARMACY?”, “PHARMACY BENEFITS” and similar and was obviously aimed at pharmacy businesses.  I mention it also because it contains testimonials from three members of the public pleased that they had lost weight since starting “the Healthpath™ program”.  Although apparently obtained before March 2006, the three testimonials in question are provided under the heading “Here are some recent success stories.”  I note that, at the time of writing, the identical three testimonials (and no others) appear currently on (what I assume to be) Healthpath’s website (< located by clicking on a hot link marked “Click Here to Read Our Latest Successes”.  Assuming the HEALTHPATH mark was being continuously used in the intervening eight year period, I can only conclude either that subsequent favourable testimonials have not been forthcoming or that the Opponent and/or Healthpath do not consider it important to refresh their marketing materials or website from time to time in this regard.

9. The document forming Annexure PJD-34, being the “proposed terms and conditions” for a “Beauty Program” which Mr Dibben says was never actually developed to completion, is another example.  His description of this document which, (to my mind significantly), is dated as long ago as 19 February 2008, causes me to wonder how actively Healthpath may have been involved in providing the Services during the Relevant Period.  In this regard he says:

   17. It was always the case that other additional health programs would be included by Healthpath as additional program modules were developed over time.  Healthpath is currently developing a “Beauty Program” which has yet to be developed.  Attached and marked PJD-34 is a copy of the proposed terms and conditions for that program.  This program has not yet been released.

10. It thus seems that although the Opponent (or possibly Healthpath, it is unclear from the evidence) produced a formal, two page set of “Terms & Conditions” in February 2008 for the proposed “Beauty Program”, no subsequent effective action was taken to advance the proposal any further in the following six years or so.

11. While the document forming Annexure PJD-34, being effectively a draft contingency agreement, would presumably not have been seen by any third parties in any event, I also note in passing that it too does not actually bear the HEALTHPATH mark per se.  Rather, it features Composite Mark 6 (shown again below for ease of reference) in the footer of each page:

1. Here the placement and nature of the mark, featuring as it does the words “Powered by Healthpath”, suggest to me use in relation to a software program, not use in relation to medical services, a matter to which I will return later in this decision.

2. Ms Ross highlighted further anomalies between the content of some of the documents annexed to Dibben, and Mr Dibben’s claims that those documents had been distributed in the course of trade, apparently unchanged, from the years 2004 to 2008 until August 2014 when Mr Dibben made his declaration.  Annexure PJD-5, for example, is said by Mr Dibben to be:

   a copy of the Healthpath Training Program.  This Program was created in October 2004 and was utilised and distributed in the course of training participating pharmacies.  It is still in use in its current format.

3. The initial page of the annexed document is reproduced below:

4. As Ms Ross observed:

   The Training Program at Annexure PJD-5 … is said to have been created in October 2004 and “is still in use in its current form” (para 7, Dibben Declaration).  It refers to a “Mental Functioning Assessment Program” and a “Premature Birth Assessment Program”. However, despite this document being created nearly 11 years ago, there is no evidence of a “Mental Functioning Assessment Program” nor of a “Premature Birth Assessment Program”.  It is notable that Mr Dibben himself does not refer to such programs in paragraph 13 of the Dibben Declaration.  For those reasons, it is questionable whether or not this Training Program “is still in use in its current form”.

5. What Mr Dibben does say in paragraph 13 of his declaration was reproduced in paragraph 24 above.  He says that, “The programs developed by Healthpath include (a) The weight and health program, (b) The blood pressure program and (c) The baby program.”  Accepting this to be the case, it does seem odd that the Opponent (and/or Healthpath) would continuously use the PJD-5 Training Program “in its current form” from 2004 until (at least) August 2014 when Dibben was declared.  In this regard the document indicates on its first page that the HEALTHPATH branded programs are “to be conducted” through participating pharmacies (presumably at some time in the future) and that the first major program “will be” the Weight Control Program.

6. In like vein and based on a comparison of Annexures PJD-7 (dated 6 December 2011)[9] and PJD-32 (dated 13 September 2007) Ms Ross observed that, “…it is clear … that at some stage [Healthpath] changed its address from [Wickham] to [Kotara]” in the intervening period.  On the face of it this does seem to be the case.  Yet, she noted:

   Despite the apparent change in address Mr Dibben gives evidence that Annexure PJD-32 was distributed from 13 July 2007 and is “distributed…to the present time” (para 16(m), Dibben Declaration) which spans the time in which [Healthpath] had two different addresses.  It is unlikely that a company would continue to distribute materials with incorrect details.

   [9] Being, as mentioned, the only annexure to Dibben dated during the Relevant Period.

7. I note that several other of the documents annexed to Dibben and said to have been in continuous use up to August 2014 also show Healthpath’s former Wickham address.

8. I would again highlight in passing that Annexure PJD-32, a three page document headed “Weight Loss Pharmacy/Customer Agreement” (left blank, with no parties indicated), like Annexures PJD-27, PJD-34 and PJ-56 described above and like much of the other documentation before me, does not bear the HEALTHPATH mark per se in any event.  It simply mentions the company “Healthpath Pty Ltd” (and its Wickham address) once incidentally in the text of the agreement and, other than this, the footer of each page contains Composite Mark 6 (shown in paragraph 34 above).  Again, the words “Powered by Healthpath” featured in Composite Mark 6 suggest use in relation to a software program, rather than use in relation to medical services in Class 44.

9. The Dibben declaration lacks cogency in other respects too.  While it is unclear what Mr Dibben intends by the description “the registered trade names”, he says at paragraph 30 of his declaration that:

   Reference to the registered trade names has been utilised by Healthpath throughout its existence from 2004 to date, and in particular, in the following:-

   (a) All personal discussions and personal promotion;

   (b) All newspaper and print advertising;

   (c) Websites, healthpath.com.au, pslnet;

   (d) Correspondence with all pharmacies and the Pharmacy Guild;

   (e) All brochures, questionnaires and information leaflets;

   (f) Stationery and letterheads; and

   (g) Emails.

10. I would just comment that no examples of any newspaper or magazine advertising, or of correspondence with any pharmacies or the Pharmacy Guild, or of emails, during the Relevant Period or at all, are included with Mr Dibben’s declaration.  He does annex samples of business cards and letter head stationery (Annexure PJD-51) which I observe bear Composite Mark 4 and not the HEALTHPATH mark per se.  Moreover, although Mr Dibben says that the business cards and letter head in question have been “used continuously to date,” they bear what I understand to be Healthpath’s superseded Wickham address, not its current Kotara address.

11. In general I find Mr Dibben’s evidence to be absent any detail or significant contemporaneous supporting documents relating to specific activity by the Opponent or Healthpath during the Relevant Period.  The evidence he provides on attendance at fairs or expos for the trade is yet another example.  He says that, “From 2004 until 2008, Healthpath managed the placement of print media advertisements for participating Pharmacies”, these advertisements having apparently been “distributed amongst attendants at all annual NSW Pharmacy Guild Trade Shows and APP Pharmacy Expo Conferences.”  Mr Dibben’s subsequent, unsupported, statement that, “Its distribution has continued to the present day” is however not as convincing as it might have been had he not been silent on how and by whom any such material may have been distributed since 2008.  Moreover, I can only infer from his below-quoted evidence specifically relating to attendance at these shows or conferences from 2005 to 2008, that neither he nor Healthpath attended such gatherings during the Relevant Period, or, if they did, that the HEALTHPATH mark was not actually used on these subsequent occasions.  Why else, I am compelled to wonder, would he say nothing specific about attendance at trade gatherings after 2008?  In this regard he simply says towards the end of his declaration that:

    18. In June 2005, I represented Healthpath at the NSW Pharmacy Guild Trade Fair at Darling Harbour in Sydney where the Healthpath program was displayed to the pharmacy industry. This expo provided Healthpath with an excellent opportunity to showcase its unique weight loss program to the entire pharmacy industry.

    19. At the Trade Fair I presented a PowerPoint presentation on behalf of Healthpath concerning “Customer Relationship Management” and an outline of that presentation is attached and marked PJD-35 a copy of the outline of my presentation was made available to all attending.

    20. On 16 May 2005 I prepared a 100 word outline of Healthpath’s program which was distributed at the Trade Fair a copy of which was included in the Trade Fair Directory Magazine, a copy of which is attached and marked PJD-36.

    21. Also attached are:

    (a) draft form letters prepared on 20 July 2005 and distributed on behalf of Healthpath at the Trade Fair in 2005 and marked PJD-37 and PJD-38;

    (b) a Healthpath Flow Chart prepared on 10 June 2005 and distributed at the Trade Fair and to all participating pharmacies is attached and marked PJD-39; and

    (c) a handout created on 20 December 2004 and distributed on behalf of Healthpath at the Trade Fair and marked PJD-40.

    22. In September 2005, I represented Healthpath at the annual Amcal Pharmacy Assistant Conference where I presented a paper, an outline of which is attached and marked PJD-41.  I prepared this paper on 16 September 2005 and copies of the paper were distributed amongst the participants at the Conference.

    …

    26. In 2007 and 2008, Healthpath was again represented at the Pharmacy Trade Fairs in Sydney and also at the APP Pharmacy Expo Conference at the Gold Coast.  During these years, Healthpath continually upgraded and consolidated improvements to its web based management system and processes and further developed its existing and additional module programs.  Attached is the Trade Directory Listing relative to the 2007 Trade Pharmacy Expo and marked PJD-42.

    27. As a consequence of my attendance and representations at the NSW Pharmacy Trade Shows and the Annual APP Pharmacy Conference Expos, considerable interest was shown by various pharmacies.  Attached are the following:-

    (a) Letter to Wilson’s Pharmacy dated 9 June 2006 and marked PJD-43;

    (b) Letter to Dowleys Leaton Pharmacy dated 12 December 2007 and marked PJD-44;

    (c) Letter to Secret Harbour Pharmacy dated 25 January 2008 and marked PJD-45;

    (d) Letter to Calmans Pharmacy dated 18 February 2008 and marked PJD-46; and

    (e) Letter to Marlin Coast Amcal Chemist dated 2 June 2008 and marked PJD-47.

1. On the face of it none of the above quoted information relating to attendance at trade gatherings or the attached documentation to which Mr Dibben refers concerns activity after 2008.  Its prominent inclusion in his declaration to the exclusion of any evidence relating to similar activity during the Relevant Period thus does appear to me to be noteworthy.

2. Mr Dibben is likewise quite specific in revealing the amounts spent (by Healthpath), “in and about”, as he puts it, “the development of artwork and marketing”.  That is, he provides very precise figures (such as $63,902.61 and $30,250.49), but only, for some unexplained reason, for the years 2005 to 2008.  While not on the face of it relevant to use of the HEALTHPATH mark in relation to the Services in any event, he adds that Healthpath has also spent “considerable sums in and about the development of its IT Based Website Management System”, but does not say when these considerable sums were actually spent.  More significantly, he provides no information at all as to any expenditure (or activity of any kind) by the Opponent, or as to any turnover or revenue ever generated by provision of the Services.

3. As mentioned, the sole annexure to Dibben dated within the Relevant Period is Annexure PJD-7.  This is a 16 page document headed “Participation & Confidentiality Agreement” expressed to be between Healthpath and a (named) pharmacy in Dubbo (“the Participant”) and apparently executed on 6 December 2011.  I consider this document problematic for several reasons.  Firstly, “Marks” are defined in the Agreement as “the Trade Marks, Logos and Trade Names described in the Schedule and any variations or modifications thereto”, with the Schedule simply specifying that “‘Marks’ include: Healthpath Logo and the name ‘Healthpath’.”  Neither the Agreement nor its Schedule otherwise mention or define “Healthpath Logo” or “the name ‘Healthpath’” and so it is not possible to say what precise mark or marks the Agreement actually contemplates.

4. The Agreement does elsewhere define the term “Image”, stating that “The Company name [that is, Healthpath Pty Ltd], the marks and the brand names, logos and slogans associated with [Healthpath’s] goods and services and the system are features of the Image”.  This does not however make the position any clearer since, with one exception, the Agreement does not say what the supposedly explanatory terms such as “the marks and the brand names, logos and slogans” themselves refer to.  The exception is the following definition contained in the Agreement that “‘Business Name’ means the Business Name set out in the Schedule.”  In this regard the Schedule states, “The Business Name is: Healthpath Pty Limited ACN 067 075 165.”

5. Moreover, as Ms Ross highlighted, there is no mention of the Opponent in the Agreement.  Indeed, the document incorrectly specifies that:

   [The Participant] acknowledges that [Healthpath] is the owner of the Marks and that the Participant’s sole right to use them is derived from this Agreement.  The Participant shall not use any other Trade Marks, Trade Names, Business Names, Logos, Designs or colour schemes in connection with the Business without the prior approval of [Healthpath].

6. It is also somewhat difficult to glean how the Agreement relates to provision of the Services.  In this regard (and contrary to what is suggested in Recital A to the Agreement), there is no mention of “health programs” in the Schedule at all.  The Recitals state:

   A. [Healthpath] has developed certain business procedures and systems together with distinctive and valuable name, image and reputation associated with the provision of health programs referred to in the Schedule (“health programs”).

   B. The system and the image requires the Participants to differentiate themselves from others supplying similar services.

   C. The Participant wishes to be appointed by [Healthpath] to operate such a business concept in accordance with the system and the image.

   D. [Healthpath] has agreed to grant the Participant the right to operate such business on the Terms and Conditions set out in this Agreement which terms the Participant has accepted.

7. The Agreement does elsewhere specify the following, albeit somewhat circular, definitions of five terms that are in principle relevant to understanding the Recitals:

   “Approved Products and Services” means the range of goods and services to be supplied by the Participant to clients as described in this Agreement.

   “Approved Purpose” means the purpose of considering, formulating, structuring, investigating and discussion [sic] the feasibility and implementation of arrangements with [Healthpath] involving some or all of the operations or assets of the entity/entities specified by [Healthpath] to the Participant.

   “Business” means the activities of the Participant in delivering the Approved Products and Services to the clients in accordance with and by virtue of the rights granted by this Agreement.

   “Health Programs” means those health programs as delivered by the Participant using the System within the Business.

   “System” means the business procedures and systems developed by [Healthpath] for the operation of [Healthpath’s] health programs and concerning a consistent high quality approach to customer service, uniform operating techniques, centralised group marketing activities, co-ordinated marketing programs and business management generally.

8. In sum, the Agreement forming Annexure PJD-7 strikes me as being of little assistance in determining the issue at hand, namely whether the HEALTHPATH mark was used in good faith in the course of trade for the Services during the Relevant Period.

9. A final matter I would mention concerning Annexure PJD-7, entitled as it is “Participation & Confidentiality Agreement” and described by Mr Dibben as having been “distributed to participating pharmacies from early 2005 to the present time”, is that it is apparently otherwise identical to the (blank, undated) document headed “Pharmacy Agreement” forming Annexure PJD-20.  Mr Dibben similarly refers to Annexure PJD-20 in his declaration as having been “distributed to participating pharmacies from May 2005 to the present time” but does not explain what the difference, if any, between the two Agreements shown in Annexures PJD-7 and PJD-20 may be.  That said, Annexure PJD-20 does not assist in determining whether there was any relevant use of the HEALTHPATH mark in any event.  Being blank, the “Pharmacy Agreement” also has a blank Schedule attached to it and so no “Marks” at all are nominated as coming under the Agreement’s auspices.

The Removal Applicant’s Evidence

1. While not in the main of direct relevance to my decision, for the sake of completeness I will just briefly touch on the Removal Applicant’s evidence in answer, which is contained in the Brogden declaration.  As mentioned, Mr Brogden has been the Removal Applicant’s corporate solicitor since 2001.  His declaration begins with a critique of Mr Dibben’s evidence which, while not necessarily unreasonable, I would characterize as argument rather than evidence and which it is unnecessary to detail here.

2. He then provides information about the New Zealand-based Removal Applicant and of its use there of the trade mark HEALTHPATHWAYS since 2008 in relation to “medical information services provided through a web-based application whereby health professionals can collaboratively share and review medical information relating to best practice of treating and managing clinical or health issues (likely to be seen in general practice) for patients in [a] particular community.”  As Mr Brogden explains, these services were developed primarily with a view to “reduc[ing] the waiting time for members of the public to access medical services.”  Provision of the services to the public is, I understand, largely via a “program” which:

   … encourages and enables participating health professionals to share and review patient and medical information via a password secured web-based application or database, with a view to assisting health professionals to determine the best “pathway” for a particular clinical condition which is likely to be seen in general practice, for a particular patient residing in a particular community.

3. After finding success in New Zealand, Mr Brogden says the Removal Applicant first used the HEALTHPATHWAYS mark in Australia in March 2012, when it “licensed Hunter and New England Health Pathways … to use the [trade mark HEALTHPATHWAYS] in Australia in respect of the [Removal] Applicant’s Services.”  He lists some ten further Australian licensees subsequently engaged, based in Queensland, NSW, Victoria, Tasmania and Western Australia.

4. Finally, Mr Brogden notes that he is unaware of any instances of confusion having arisen since the Removal Applicant commenced use of the HEALTHPATHWAYS mark.

5. That said, one aspect of the Brogden declaration which was referred to in some detail at the hearing was its Exhibit GMB-2, being “a bundle of true copy printouts from the website of the Purported Licensee at The exhibit consists of three pages downloaded from this website on 12 June 2013 (that is, during the Relevant Period) and a further 19 pages (three of which apparently identical to the 12 June 2013 pages) downloaded some 14 months after the Relevant Period on 18 August 2014.  Perhaps reflecting the paucity of contemporaneous supporting material in the Opponent’s own evidence, Mr Bevan highlighted in particular the content of the three pages downloaded on 12 June 2013 as clearly showing use of the HEALTHPATH mark for the Services during the Relevant Period, submitting they constituted particularly reliable evidence given it was the Removal Applicant which had put them before the tribunal.

6. I note that all 22 webpages contain the notice “Copyright © 2005 Healthpath Pty Ltd”.  All pages have the heading “Lose Weight” followed by the tagline “You can lose weight, but can you keep it off?” and primarily feature Composite Mark 3 and Composite Mark 4 rather than the HEALTHPATH mark per se.  Nevertheless, the element HEALTHPATH solus does appear four times (two of which accompanied by a “TM” symbol) in copy on the three pages downloaded during the Relevant Period in the phrases “Why Healthpath gets results…”, “A ‘high-level’ view of the Healthpath approach”, “Healthpath™ gives you the tools…” and “Your Healthpath™ Pharmacy can help you…”  Additionally, all three webpages contain a menu of what appear to be navigation buttons, one of which is labelled “THE HEALTHPATH PROGRAM”.

7. While there is no evidence as to how many visitors the website may have received during the Relevant Period, Ms Ross did accept that the three webpages in question were at least accessible by third parties at the time they were downloaded by the Removal Applicant on 12 June 2013.  Foreshadowing her submissions in relation to authorized use, nonetheless, she pointed out that while there was no direct evidence as to what entity owned the website in question, the copyright notice appearing on all of the pages suggested the owner was Healthpath rather than the Opponent itself.

Discussion

1. As mentioned in paragraph 23 above, Ms Ross highlighted four reasons why I should not be satisfied, based on the evidence as a whole, that the HEALTHPATH mark has enjoyed relevant use.  I deal with each of these below.

Authorised use

1. Ms Ross firstly submitted that any claimed “use” of the HEALTHPATH mark in evidence was neither by the registered owner (that is, the Opponent), nor was it “authorized” use as contemplated in ss 100(1), 7(3) and 8 of the Act. In this regard, she largely referred to my discussion of this issue in similar circumstances in SG Fleet Salary Packaging Pty Ltd v Finlease (Australia) Pty Ltd[10] and it is accordingly not necessary to repeat her submissions in detail here.

   [10] [2011] ATMO 71 at [27]-[32].

2. She noted, in addition, similarities between the facts in the present matter and those before Jacobson J at first instance in Health World Ltd v Shin-Sun Australia Pty Ltd[11] (“Health World”), where in both cases there was no written license involved, where the actions or intentions of the principals concerned (in this case Mr Dibben) were effectively indistinguishable from those of the companies they directed and where none of the supporting materials in evidence showing claimed use of the marks in question mentioned the registered owner.  Indeed in the present matter, as earlier noted, the 16 page document headed “Participation & Confidentiality Agreement”, (which forms Annexure PJD-7 and, as discussed, is the only document in the Opponent’s evidence actually dated during the Relevant Period), is a contract between Healthcare and a named pharmacy.  Not only is there no mention of the Opponent in the Agreement, the pharmacy explicitly “acknowledges that [Healthpath] is the owner of the [Healthpath Logo and the name ‘Healthpath’] and that the Participant’s sole right to use them is derived from this Agreement.”

   [11] (2008) 75 IPR 478. The matter was appealed to the Full Federal Court and subsequently to the High Court but neither appellate court took issue with Jacobson J’s findings on the issue of “authorised use”.

3. Ms Ross referred generally to [183] to [202] of Jacobson J’s judgment in Health World, highlighting the following in particular:

   [183] In dealing, later in my judgment, with [the removal applicant’s] non-use application, I give six reasons why the healthplus trade mark is used to identify the goods as those of [the claimed licensed user].

   [184] In summary, the effect of the evidence was that [the registered owner’s] name has never appeared on the packaging and [the claimed licensed user] procured the manufacture of the products.

   [185] The function of a trade mark is to give an indication to a purchaser as to the manufacture or quality of the goods and an indication of the trade source from which the goods come or through which they pass on their way to market: Aristoc Ltd v Rysta Ltd (1944) 62 RPC 65 at 74 and 79.

   [186] Here, whatever the subjective intentions of the Shin family may have been, the public face of the healthplus trade mark was that of [the claimed licensed user].  It was the only name that appeared publicly as part of the “badge of origin” of the product.

   [187] In Pioneer Kabushiki Kaisha v Registrar of Trade Marks (1977) 137 CLR 670 at 686; 17 ALR 43 at 57; 1A IPR 520 at 532–3, Aickin J recognised that a mark may be used to indicate a connection with an unidentified person.  His Honour said that in those circumstances it must indicate a connection with both the proprietor and the user.

   [188] In my opinion, that requirement is not satisfied as a matter of fact because the evidence does not demonstrate any connection between the actual use of the mark and the [registered owner].

4. His Honour went on to consider whether the registered owner of the subject trade mark was nevertheless exercising any kind of “control” over its licensee’s use, as specified by s 8 of the Act. In the absence of any documentary evidence supporting this, Jacobson J was not prepared to infer the requisite “control” was in place. As he put it:

   [190] Section 8(3) refers to the exercise by the owner of quality control over the goods dealt with in the course of trade by another. Section 8(4) refers to the exercise by the owner of financial control over the other person’s trading activities.

   [191] However, s 8(3) and (4) do not limit the meaning of the expression “under the control of” the owner of the trade mark in s 8(1): see s 8(5). It is therefore necessary to deal with the question of whether [the registered owner] exercised quality or financial control over [the claimed licensed user’s] use of the mark, or whether it controlled the use in the broad sense referred to by Aickin J in Pioneer at CLR 683; ALR 54; IPR 529.

   [192] There is no evidence before me that [the registered owner] has exercised quality control over the HealthPlus products manufactured for [the claimed licensed user] and supplied under [the claimed licensed user’s] packaging.

   …

   [195] The only written agreements dealing with the manufacture of the goods were the good manufacturing practice agreements which are entered into by [the claimed licensed user].  There are no written agreements between [the claimed licensed user] and [the registered owner] relating to the manufacture of the goods or covering any other topic.

   …

   [197] Nor did [the registered owner] exercise “financial control” over [the claimed licensed user’s] trading activities within the meaning of s 8(4). This is because, in my view, the financial control to which the subsection is directed is a legally enforceable power of control which did not exist between [the registered owner] and [the claimed licensed user].

   …

   [199] [the claimed licensed user] and [the registered owner] have different shareholders.  They have common directors but that has only been the position since July 2006.  Of course, in a practical sense, it may be unlikely that Ms Shin would remove her parents as directors of [the claimed licensed user].  But that is not an answer to the separate corporate identity of [the registered owner] and the power of Ms Shin as the majority shareholder to revoke any exercise of control flowing from common directorships.

   [200] The “control” which is contemplated by s 8(5) would seem to be as wide as the “connection in the course of trade” to which Aickin J referred in Pioneer at CLR 683; ALR 54; IPR 529.  His Honour said that the connection may be slight, such as selection or quality control or control of the user in the sense in which a parent company controls a subsidiary: see also Henschke at [70].

   [201] However, Aickin J observed in Pioneer at CLR 683; ALR 54; IPR 529 that it is essential that the user maintains the connection of the registered proprietor with the goods.  That connection is not established on the facts of the present case.

   [202] It follows in my view that [the claimed licensed user] was not an authorised user of the mark.  It also follows that the use of the healthplus trade mark was likely to deceive or cause confusion within the meaning of s 88(2)(c) of the Act.

5. Ms Ross urged a similar conclusion based on the evidence before me, noting that in the current matter:

   (a) there is no evidence of a written licence;

   (b) there is no evidence of the terms of any written or unwritten licence, including the right of [the Opponent] to terminate any licence;

   (c) there is no evidence of control having been exercised by [the Opponent] over Healthpath’s use of the HEALTHPATH mark;

   (d) there is no evidence of any involvement by [the Opponent] in actual use of the HEALTHPATH mark;

   (e) the evidence is devoid of any quality control provisions over the services provided; and

   (f) it is not sufficient that [the Opponent] and Healthpath share a common director.

6. Indeed, in the present matter there was, in addition, the striking statement mentioned earlier in the “Participation & Confidentiality Agreement” (Annexure PJD-7) and the “Pharmacy Agreement” (Annexure PJD-20), apparently given to all participating pharmacies since 2005 and which required them to “acknowledge that [Healthpath] is the owner of the [Healthpath Logo and the name ‘Healthpath’] and that the Participant’s sole right to use them is derived from this Agreement.”

7. I find I am in general agreement with Ms Ross’ submissions on this issue. In so saying I am mindful of the fact that the Full Federal Court, (in the context of ss 58 and 59 of the Act, it must be said), in Food Channel Network Pty Ltd v Television Food Network GP[12] (“Food Channel”) indicated one should not rush to reflect adversely on the claimed actions or intentions of a claimed user in circumstances where there are no formal arrangements in place between companies controlled by one individual.  In this regard the Court advised at [61]:

   The courts should be cautious to allow the legal fiction of the corporate veil to defeat registration in a case where one of a group of companies, all controlled by the same directing mind and will, used the mark prior to the other.

   [12] (2010) 86 IPR 437.

1. However in Food Channel there was evidence before the Court that a single person was “the founder and sole shareholder and director” of both of the companies concerned and the Court accordingly accepted that person was the “directing mind” of both.  Here the evidence shows that while Mr Dibben is the sole Director and shareholder of the Opponent, he is only one of two Directors and shareholders of Healthpath.  Moreover, the Full Court in Food Channel made its remarks in light of the onus there being on the opponent to registration to make out its s 58 or s 59 ground. Here by contrast the onus is on the registered owner opposing removal to satisfy me it used, or “controlled”, or “authorized” use of, the HEALTHPATH mark, for the Services during the Relevant Period. Essentially for the reasons submitted by Ms Ross discussed above, I am not so satisfied.

2. As mentioned earlier, ss 100(1)(c) and 100(3) of the Act provide that the party opposing removal bears the onus of rebutting an allegation made against it under s 92(4)(b). Here the Opponent has not on the evidence satisfied me that it used the HEALTHPATH mark during the Relevant Period and, further, has not satisfied me that any use that may have been made of the HEALTHPATH mark by Healthpath qualifies as “authorised use” as contemplated by ss 7(3) and 8. The Opponent has accordingly not discharged the onus upon it and the removal application is accordingly successful for this reason. For the sake of completeness, nevertheless, I will below briefly address the other matters raised by the Removal Applicant.

Services

1. Ms Ross further submitted that any claimed use of the HEALTHPATH mark during the Relevant Period was not in relation to the Services in any event.  To the extent that it was used at all, Mr Dibben’s evidence was that it was limited to use in relation to a “weight loss program”, a “blood pressure program” and a “baby program.”  Referring to several of the explanatory brochures annexed to Dibben, Ms Ross added that, “Despite being called different names, the three programs are all weight management programs”.  Moreover, she submitted, the weight loss programs were on the face of it neither “medical services” nor “medically supervised” services.

2. Whether or not the Opponent, through Healthpath, had used the HEALTHPATH mark even for this limited range of services was, in her submission, unclear.  In this regard Ms Ross noted several references to the services in the annexures to Dibben as being software related rather than concerning “Medical services, being the delivery of medically supervised disease state management programs.”  She cited Annexure PJD-19, said to be “a copy of the Pharmacy In House Training Manual … presented by way of a PowerPoint presentation to each of the participating pharmacies”, which “was created in November 2006 and is used to the present day.”  Under the heading “WHAT IS HEALTHPATH?” this states “HealthPath™ is a secure, online, customer, relationship management software system.”

3. Ms Ross also cited Annexures PJD-44, PJD-45, PJD-46 and PJD-47 in this regard.  These are copies of essentially identical letters dated 12 December 2007, 25 January 2008, 18 February 2008 and 2 June 2008 addressed to different pharmacies.  They all prominently feature Composite Mark 4 at the top of their initial page accompanied by “ABN 22 067 075”.  (I mention that Healthpath’s Australian Business Number is in fact 22 067 075 165, whereas the Opponent’s ABN is 68 003 771 846, so presumably Healthpath’s ABN was intended.)  Although unsigned, the four letters all end with the signature block “Dianne James for Emma Greentree” and I note that Emma Greentree is Company Secretary of Healthpath as well as being, along with Mr Dibben, a Director and shareholder of that company.  Similarly to Annexure PJD-19, under the heading “WHAT IS HEALTHPATH™?” all of the letters state that, “HealthPath™ is a secure, online software system.”

4. I note that the point being made by Ms Ross is consistent with my earlier observation[13] that the only claimed use of the HEALTHPATH mark on several of the annexures to Dibben is limited to use of Composite Mark 6 in the footer and that the placement and nature of that mark suggest to me use in relation to software, rather than use in relation to medical services in Class 44.

   [13] See paragraphs 34 and 35 above.

5. Even so, not all of the documentation annexed to Dibben is in this category.  Annexure PJD 5 is “a copy of the Healthpath Training Program…created in October 2004 and…utilized and distributed in the course of training participating pharmacies” (and, I note in passing, prominently features Composite Mark 1 at the top of each of its 24 pages).  It says that “Healthpath is the registered brand name for a range of ‘user pay’, medically supervised, community health programs to be conducted through participating pharmacies throughout Australia.”  I think this description, on the face of it, could reasonably be said to fall within the Services.

6. The brochure shown in Annexure PJD-6, apparently distributed by Healthpath between 2005 and 2008 at trade fairs to representatives of potential participating pharmacies, for its part, suggests “Healthpath” is both a “weight loss and management program” and a portal to “one of the world’s most comprehensive online management systems”:

   Healthpath is a weight loss and management program designed and developed exclusively for pharmacy.

   As well as being part of a major health initiative supported by experts in their field as a Healthpath pharmacist you also get access to one of the most comprehensive online management systems available in the world today.

7. PJD-24, said to be an “Application for Enrolment”, is otherwise problematic in that it does not mention the HEALTHPATH mark at all.  That aside, I note it commences with the words “I, [blank], of [blank], do hereby apply for enrolment in your Health Program.  I understand that the program is an on-going lifestyle program initially consisting of a twenty-six (26) week supervised Weight Management and Exercise Program.”

8. I accept what Mr Dibben says regarding his (and presumably the Opponent’s) intentions before applying to register the Trade Marks, namely:

   In early 2004 I decided to replace an existing Weight Loss Program which was being promoted through my Pharmacy at Kotara with a Weight Loss Program of my own creation.  This Weight Loss Program was to be marketed under the name “Healthpath” or “Health Pathways” and would be initially trialled in 3 selected pharmacy outlets before being promoted throughout the Pharmacy Industry.

9. However the impression I am left with from the totality of Mr Dibben’s evidence is that whatever the initial intention, efforts changed at some point to describing and marketing the services apparently being offered with explanations such as “HealthPath™ is a secure, online, customer, relationship management software system.”  How soon or how consciously any such change in emphasis took place the evidence does not make clear.  I do nevertheless note that in 2013 when the SGP[14] was filed, the Opponent was describing its initial and subsequent activity under the Trade Marks in the following way:

   For many years and up to twelve (12) months prior to the registration of the trademark [the Opponent] has expended substantial efforts in and about the development of technology, software and IT based programs.  [The Opponent’s] expenditure in this regard has exceeded $1.5 million.  Those programs are promoted under and by reference to the name “Healthpath”.  [The Opponent] previously used the name Helathpathways [sic] in relation to these programs.

   [The Opponent] is currently engaged in further software development of its IT based programs which will involve expenditure in the vicinity of a further $100,000.00 - $150,000.00 over the next 6-8 months which involves the re-adaption and re-coding of its IT technology, adapting new functionality to the software and extending the program packages.  Such software will utilise both the singular and plural terms of its registered trademark - Healthpath and Healthpathways.

   Since approximately mid 2003 [the Opponent] has been involved in the ongoing marketing of its technology and IT based programs and has developed an acknowledged market presence and expertise in and around the trademark names Healthpath and Healthpathways within the health and medical industries.

   [14] Set out in full in paragraph 4 above.

10. To conclude, I find difficult to say with any certainty from the evidence whether the HEALTHPATH mark was used for the Services per se during the Relevant Period, as opposed to its possible use in relation to “a secure, online software system”, as described in some of the materials annexed to Dibben and as indicated in the SGP.  This, then, is another matter on which, effectively, the Opponent has failed to satisfy me.

Relevant Period

1. In my description of Mr Dibben’s evidence earlier I have already dealt to a large extent with Ms Ross’ third objection, namely her more general observation that, “Any use of the HEALTHPATH mark claimed during the Relevant Period was merely asserted and not otherwise substantiated.”  In the Removal Applicant’s submission I should not consider the Opponent’s evidence sufficiently precise or documented as to be able to satisfy myself how or if the HEALTHPATH mark was used during the Relevant Period.  Again, it is the Opponent which bears the onus in this regard.

2. It is true, as already discussed, that at no point in its evidence does the Opponent specifically say that the HEALTHPATH mark was used during the Relevant Period.  Nor, with the apparent exception of the otherwise problematic Annexure PJD-7 discussed above, do any of the some 56 annexures to Dibben show documentation that was created after 2008.  There are no advertising figures given outside the years 2005 to 2008 and there are no turnover or revenue figures provided at all.  In summary, given the shortcomings inherent in the Opponent’s evidence (and Mr Bevan’s submissions in relation to Exhibit GMB-3 to Brogden notwithstanding) I concur with the Removal Applicant that I cannot be satisfied the Opponent used the HEALTHPATH mark for the Services during the Relevant Period.

Actual Marks Used

1. Ms Ross’ fourth objection was that, “Most of the claimed use of ‘the HEALTHPATH mark’ in evidence was in fact of the mark ‘with additions or alterations that … substantially affect [its] identity’.”  In light of my above conclusions on the other matters raised on behalf of the Removal Applicant, discussion of this objection is effectively moot and I will not dwell on it at length.

2. That said, it is again true that the majority of the documentation in evidence shows use of one or more of the composite marks shown in paragraph 23 above rather than the HEALTHPATH mark as registered.  Annexures PJD-13, PJD-14, PJD-15, PJD-16 and PJD-17, for example, are all headed “TERMS & CONDITIONS” and bear Composite Mark 6 in their footers.  While the term “Healthpath™” is elsewhere used in these documents, despite the TM claim the term is specifically defined to be an abbreviation for “Healthpath Pty Limited” rather than as a trade mark.  I should highlight too that some of the documentation annexed to Dibben shows no trade mark at all.  As regards the remaining documentation annexed to Dibben which does arguably show use of the HEALTHPATH mark for the Services, it is, as discussed, not possible to say when or how any of this material was circulated and in particular whether it was circulated during the Relevant Period.

Obstacles to Use

1. For the sake of completeness I note the Opponent has not provided evidence of any particular circumstances prevailing during the Relevant Period which might have been an obstacle to use of the Trade Marks for any of the Services. I accordingly find no case under s 100(3)(c) of the Act has been established.

The Registrar’s Discretion

1. I have found that there was no clear use of the Trade Marks during the Relevant Period.  In such circumstances s 101(1) gives the Registrar the discretion to remove the Trade Marks “in respect of any or all of the [Services]”, whilst s 101(3) explicitly provides that discretion may be exercised in the Opponent’s favour if the Registrar is satisfied it is reasonable to do so.

2. As Bennett J explained in Pioneer Computers Australia Pty Ltd v Pioneer KK:[15]

   [167] The discretion under s 101(3) is a broad discretion to decide not to remove a trade mark from the register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the court is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.

   [168] In Kowa Co Ltd at [98], Lander J rejected the submission that a party seeking the exercise of the discretion needs to show “exceptional circumstances”. In E & J Gallo at [198], Flick J agreed with Lander J that there is no requirement to establish exceptional circumstances. With respect, I also agree with Lander J that there is no warrant to read a requirement for exceptional circumstances into s 101(3).

   [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:

   •  there had been no abandonment of the trade mark;

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

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

   •  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;

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

   [15] (2009) 80 IPR 38.

3. In the present matter the Opponent has not satisfied me that any facts or circumstances exist, or that there is any relevant public interest, which would make it reasonable to exercise the Registrar’s discretion in its favour.  I am not, on balance, satisfied on the evidence before me that the Trade Marks were used by the Opponent to any significant degree in relation to the Services, whether before, during or after the Relevant Period (if at all) and the Opponent accordingly does not appear to be in a position to claim the mark has garnered any significant reputation in Australia.  In summary, this is not a case, on the face of it, which warrants exercise of the Registrar’s discretion in the Opponent’s favour pursuant to s 101(3) and I decline to do so.

Decision

1. The Opponent has not satisfied me that it used either of the Trade Marks in the course of trade for any of the Services during the Relevant Period, nor that there were any circumstances which were an obstacle to use.  Further, no circumstances have been shown which in my view warrant exercise of the Registrar’s discretion not to remove the Trade Marks in respect of all the Services.  I accordingly direct that registration 1012285 be removed from the Register one month from the date of this decision.  If the Registrar has been served with a notice of appeal before then I direct that removal shall not occur until the appeal has been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.

Costs

1. As the successful party, the Removal Applicant is entitled to its costs and I award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.

Michael Kirov

Hearing Officer

Trade Marks Hearings

12 January 2016