Secondment Pty Ltd v MCI Group Holdings SA

[2013] ATMO 71

TRADE MARKS ACT 1995

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

Re:Opposition by SECONDMENT PTY LTD to application under section 92 of the Act by MCI GROUP HOLDINGS SA to remove trade mark number 985083 – MCI (35) - in the name of SECONDMENT PTY LTD

Delegate:	Heath Wilson
Representation:	Opponent: Kenneth Young, director of the Opponent, via telephone. Applicant: Robert Kelson of Callinans, Patent and Trade Marks Attorneys, via telephone.
Decision:	2013 ATMO 71 Application for removal under section 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 – opposition to removal established.

Background

1. On 22 August 2011, MCI Group Holdings SA (“the Applicant”) filed an application under sections 92(4)(a) and (b) of the Trade Marks Act 1995 (“the Act”) for the removal of the following trade mark from the Australian Trade Marks Register:

   Trade Mark No: 985083

   Trade Mark: MCI (“the Trade Mark”)

   Filing Date: 9 January 2004

   Owner: Secondment Pty Ltd

   Specification of Services:

   Class 35: Management consultancy services relating to advertising, business administration, business management including relocation and migration of businesses and office functions provided internationally; marketing consultancy services provided internationally (“the designated services”)

2. On 21 November 2011, Secondment Pty Ltd (“the Opponent”) filed a notice of opposition (“the Notice”) to the application for removal. In an attachment to the Notice it was stated that the Opponent “intended to use trade mark number 985083 at the time the application for registration was made and has used it, in good faith, in Australia on the specified services.” Kenneth Young (Director of the Opponent) also stated that the Opponent used the Trade Mark in the three year period specified in the application for removal but, if it fails to establish that use, requests that the Registrar’s discretion should be exercised in favour of the Opponent.

3. During the course of the evidence stages for the opposition proceedings, the Opponent requested that an order for security of costs be made under section 222(b) of the Act. The Applicant is a person[1] that neither resides nor carries on business in Australia. On 15 March 2012 an order for the security of costs was made and those monies were subsequently received from the Applicant by this office.

   [1] ‘Person’ includes a body of persons, whether incorporated or not (section 6).

4. Evidence in support was filed by the Opponent comprising the statutory declaration of Mr Young dated 18 May 2012 with annexures A to H and J to V.

5. On 29 October 2012, IP Australia received the evidence in answer from the Applicant. That evidence consisted of a statutory declaration of Joelle Zumwald and Maryvonne Lazzarotto (Directors of the Applicant) dated 16 October 2012 with exhibits JZML1 and JZML2.

6. The evidence stages concluded, written submissions were filed by the parties and on 26 July 2013 I heard the opposition to the removal application in Canberra as a Delegate of the Registrar of Trade Marks. The Applicant was represented by Robert Kelson of Callinans Patent and Trade Marks Attorneys who attended via telephone. Mr Young also attended the hearing via telephone and made submissions on behalf of the Opponent.

The Law

1. Sections 92(4), 100(1) and 101 of the Act relevantly provide:

Section 92: Application for removal of trade mark from Register etc.

(4) An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

(a)that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

(i)to use the trade mark in Australia; or

(ii)to authorise the use of the trade mark in Australia; or

(iii)to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services to which the non‑use application relates and that the registered owner:

(iv)has not used the trade mark in Australia; or

(v)has not used the trade mark in good faith in Australia;

in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;

(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.

Section 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 services.

Section 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

(b)the Registrar is satisfied that the grounds on which the application was made have been established;

the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

(2)Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

(3)If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

(4)Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:

(a)similar goods or closely related services; or

(b)similar services or closely related goods;

to those to which the application relates.

Onus

1. Section 100 of the Act makes clear that the Opponent bears the onus of rebutting the allegations made by the Applicant under paragraphs 92(4)(a) and 92(4)(b) of the Act. For the purposes of section 92(4)(a), the filing date of the trade mark registration is 9 January 2004. With reference to paragraph 92(4)(b), the application for removal of the Trade Mark from the Register was filed on 22 August 2011. Accordingly, three years ending one month before the day on which the non-use application was filed ends on 22 July 2011 (“the relevant period”).

Reasons

Section 92(4)(a):

1. The act of applying for a trade mark is prima facie evidence of an intention to use it[2], or as Dodds Streeton J phrased it in Suyen Corporation v Americana International Limited[3]: “[A]s possession of the requisite intention is a pre-condition of entitlement to apply, it may readily be presumed from the fact of application.” Taking the intention arising from the act of filing into account, the onus may be shifted to the Applicant by making a positive statement regarding its intention to use the trade mark. In Structureco Inc v Starite Distributors Pty Ltd the Hearing Officer found:[4]

   Although the opponent to removal does bear the initial onus, in accordance with the legislation, I think that, in the case of applications for removal under s 92 (4) (a), where the primary allegation regards the state of mind of an applicant for registration about whether it intends to use a mark in good faith, then that onus is not high. I believe that it is so low that it can be overcome if the opponent or its agent states that it was the case that the applicant for registration had an intention to use the mark in good faith.

   [2] See Aston v Harlee Manufacturing Co (1960) 103 CLR 391 (at 401).

   [3] Suyen Corporation v Americana International Limited (2010) 87 IPR 262 at [197].

   [4] Structureco Inc v Starite Distributors Ltd (2000) 49 IPR 209; and see Bunter v Hobarama LLC (2005) 67 IPR 216 at 222.

2. As mentioned previously, the Notice contained an additional attachment stating:

   The opponent intended to use trade mark number 985083 at the time the application for registration was made and has used it, in good faith, in Australia on the specified services;

   The opponent has, in the 3 year period specified in the application for removal, used trade mark 985083 in good faith in Australia on the specified services.

3. In addition, the statutory declaration of Mr Young reiterates that intention to use the Trade Mark and refers to its use in the relevant period.[5] The Opponent therefore unequivocally declares an intention to use the Trade Mark at the date of filing. The content of the Applicant’s evidence does nothing to displace the presumption of an intention to use the Trade Mark in good faith on the designated services. I therefore find that the ground for removal under paragraph 92(4)(a) of the Act has not been made out.

   [5] At paragraphs 3 and 4 of the Young declaration.

4. The first element of paragraph 92(4)(a) has not been established and I need not consider the second element, namely, whether the Opponent has used the trade mark at any time prior to one month before the removal application was filed. In any event, that element will be answered in the following discussion. I will now turn to the ground for removal under paragraph 92(4)(b) of the Act.

Section 92(4)(b): Use of the Trade Mark

1. The statutory declaration of Kenneth Young annexes copies of correspondence from, and invoices to, the Opponent’s clients. He declares that they are evidence of trade mark use for the specified services and that the contents of these documents “speak for themselves.”[6] The documents specifically include purchase orders, letters and invoices for services rendered. Some of the material (despite Mr Young’s assertions) lacks detail necessary to establish use of the Trade Mark. The question is whether there is sufficient evidence of use before me to rebut the allegations of non-use made by the Applicant.

   [6] Young declaration, paragraph 6.

2. Mr Kelson argued that the demonstrated trade mark use was not use as a badge of origin and does not possess the character of a brand. Whenever the Trade Mark appears, it is presented in the following context as a header for correspondence, order forms and tax invoices:

   MCI

   Management Consultants International

   Marketing Consultants International

   Migration Consultants International

3. In terms of what may constitute use of a trade mark, Mr Kelson referred to the decision of the Full Federal Court in Nature’s Blend Pty Ltd v Nestle Australia Ltd[7] (“Luscious Lips”). Mr Kelson referred to the summary given in “Luscious Lips” regarding the principles governing whether a term has been used as a trade mark. He argued that the above use does not possess the character of a brand, is not a ‘badge of origin’, and by virtue of its positioning and placement would only be seen as a business name or an acronym for the descriptive words that appear below it. 

   [7] Nature’s Blend Pty Ltd v Nestle Australia Ltd [2010] FCAFC 117 at [19].

4. Mr Young argued that as “Luscious Lips” was an infringement case it should be distinguished from the current matter. However, I cannot agree that the considerations regarding trade mark use in that case are irrelevant. The findings in that case with regard to trade mark use must also hold in relation to an opposition to an application for non-use.

5. The context in which a trade mark appears is all-important in determining whether certain use constitutes use as a trade mark[8]. In Anheuser-Busch, Inc v Budejovick Budvar, Nrodn Podnik & Ors[9]:

   The assessment is made from the perspective of what a person looking at the label would see and take from it, as to the purpose and nature of its use: The Shell Co, supra at 425; Wrigley’s (Australasia) Ltd v Life Savers (Australasia) Ltd (1936) 37 SR (NSW) 9, 16; Aldi Stores, supra at [22] to [24] and [76].

   [8] Aldi Stores Ltd Partnership v Frito-Lay Trading Company GmbH [2001] FCA 1874.

   [9] Anheuser-Busch, Inc v Budejovick Budvar, Nrodn Podnik & Ors [2002] FCA 390 at [186].

6. The acronym (or initialism) ‘MCI’ by itself is not one that other traders in the business of marketing consultancy are likely to desire to use (in an absence of an improper motive) in the ordinary course of trade. The fact that the use occurs in conjunction with the words from which the acronym arises, is not significant in this case. In the first place, there is nothing to suggest that MCI is a known acronym for the designated services, and its ambiguous nature is highlighted by the fact that not one, but three possibilities for its meaning appear below it. I am of the view that consumers will see the Trade Mark as a brand first rather than as a description of the services or as a business name.

7. In many of the invoices, the Trade Mark appears in the aforementioned fashion, but in addition to the Opponent’s company name. This lessens the likelihood that the Trade Mark would be perceived by the consumer as the name of the Opponent’s business or company. The courts have established that a trade mark appearing on a label may perform more than one function. On the evidence before me, I am satisfied that the main function of the use of the Trade Mark is as a brand, and that it would appear that way to consumers.  

8. I find that the above example constitutes use of the Trade Mark as registered.

Use in the relevant period

1. From the Opponent’s 21 annexures, twelve are clearly dated within the relevant period. Nine of the twelve actually feature the Trade Mark in the manner discussed above. However, some of the emails dated outside the period refer to services that occurred within the relevant period.   

2. Annexures A to E to the Young declaration indicate that the Opponent has a client in Tokyo and that he provided advice to that client in February and March 2007.  The Opponent’s conferences with the client took place in both Tokyo and Sydney with regard to a proposed business venture in Australia. While there is some use of the Trade Mark, the dates on the documents do not fall within the relevant period and the nature of the invoices is vague. I therefore cannot definitively determine whether the services provided were management consultancy services and the declaration of Mr Young does not shed any further light on this particular evidence. These annexures do not establish trade mark use in the relevant period.    

3. Annexures F to H are two items of correspondence followed by an invoice. In September 2010, Mr Young was contacted by another potential client from Japan but the query related to the practice of tameshigiri (the Japanese art of ‘test cutting’) in Singapore. The client also refers to a company of Mr Young’s in Singapore and asks to meet Mr Young in Tokyo. While occurring within the relevant period, there is further doubt regarding the nature of the services provided. Annexure H is an invoice from October 2010 and vaguely states that the advice was for “matters relating to doing business or investment in Australia”. However, Annexure F makes clear that the intent of the meeting was not to trade in Australia but enquire about a business opportunity in Singapore. If this is not the case, the inconsistency has not been explained by the Opponent.  

4. Annexures J and K refer to advice given to a company based in Hong Kong regarding the export of processed dry edible bird’s nests to Japan. The services included advice on business structures, introduction to relevant wholesalers, advice on customs, tariffs warehousing, banking and factoring facilities. It is also clear that the services were carried out in Japan by the Opponent’s consultants and that it was advice on conducting business in Japan, not Australia.

5. In Re Registered Trade Mark “Yanx”,[10] Willliams J held:

   On principle and as a matter of common sense, however, it would seem that a mark is used as a trade mark in Australia if it is used here to designate the goods of a particular trader which are offered for sale in Australia under that mark whether the goods themselves are actually in Australia or not. The goods are put upon the Australian market whether they are in Australia awaiting delivery upon sale or they may have to be imported for delivery after sale. They are in either case actually a vendible article in the Australian market…

   [10] Re Registered Trade Mark “Yanx”; Ex Parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199 (at 205).

6. Therefore, so long as the goods/services are sold or offered for sale in Australia there can still be trade mark use even if the goods are located, or services are provided, abroad. In Carnival Cruise Lines Inc v Sitmar Cruises Ltd[11] (‘FUNSHIP’) Gummow J relevantly said:

   This, like many of the other authorities, was concerned with user in relation to goods, rather than services. In adapting what was said by Windeyer J to user of a service mark, it has to be remembered that whilst the same may be true of contracts for supply of future or unascertained goods, a service will not exist before its supply. Thus, the use of a trade mark in relation to services may readily be understood as a use in and about the soliciting and conclusion of contracts for the supply thereafter of services.

At 511, Gummow J found:

Thus, whilst the course of trade involved the provision of the services contracted for by steps taken outside Australia (ie the cruise itself) crucial integers in that course of trade took place in Australia. The trade commenced with the various steps taken to encourage inquiries from prospective customers and advanced with the placing and acceptance of bookings. In relation to that course of trade, the marks FUN SHIP and FUN SHIPS were used so as to indicate the connection between Carnival and the services to be provided by means of its cruises, and to distinguish Carnival cruises from those operated by other traders...

[11] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495 per Gummow J (at 509).

1. In Optical 88 Optical 88 Ltd v Optical 88 Pty Ltd (No 2)[12] Yates J said of the conclusions in ‘FUNSHIP’:

   Thus the fact that the services were to be provided, and even consumed, outside Australia did not mean that there had been no use of the trade mark “in physical or other relation to” those services on the facts of the case. The use of the challenged mark in relation to the offering of the services in Australia was sufficient to constitute trade mark use in that particular case…

   [12] Optical 88 Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380; (2010) 275 ALR 526; (2010) 89 IPR 457.

1. In May 2011, the Opponent received a request from Japan-based customer for a Tokyo meeting and for a copy of the ‘Australia Report’ after receiving the Opponent’s flyers in the mail. The ‘Australia Report’ is described in the Opponent’s flyers[13] as:

   [A] confidential report for foreign nationals who intend to do business or investing in Australia. The report will give useful information on Australia, including political, legal and economic aspects, the local market, the financial system, the vehicle/entity to conduct business investment and the expatriate personnel.

   [13] Annexures N and O to the Young declaration.

2. The flyers in the above annexures refer to the ‘Australia Report’ and are dated (May 2011) within the relevant period, but they also function as an advertisement for the Opponent’s management, marketing and migration consulting services aimed at major Asia-Pacific Economic Cooperation economies. They prominently feature the Trade Mark. While I note that the two order forms appear to be signed by Japan-based customers, the Opponent’s address in Sydney clearly appears on the order form indicating where the offer for the ‘Australia Report’ and (more importantly) the management consulting services originate.

3. Annexures P and R consist of two invoices detailing sales of the ‘Australia Report’ within the relevant period to two different Japan-based clients. The Trade Mark is present on both of these invoices – invoices that originate from the Opponent’s address in Australia.    

4. Following the relevant period (on 5 and 7 August 2011), the Opponent has conducted conferences with clients in Tokyo providing advice on business prospects for trading in Australia.[14] On 7 May 2011, within the relevant period, the Opponent offered advice on business and investment in Malaysia to an Australia-based client. This conference took place in Sydney and was clearly in relation to the designated services.[15] The date of these services is confirmed by the client who has supplied a signed letter to that effect.   

   [14] Annexures S and T to the Young declaration.

   [15] Annexures U and V.

5. The provision of the Opponent’s services did not, in the main, occur in Australia. However, while the services are mainly conducted overseas, it is evident that the Opponent’s services are offered in Australia and primarily operate from an address in Sydney. In addition, at least one customer in Australia has enlisted the services of the Opponent in the relevant period, with reference to the Trade Mark.

6. In terms of the quantum of use necessary to rebut an allegation of non-use under the Act, it has been established that the Opponent need not demonstrate a reputation in Australia, but rather a genuine bona fide use of the Trade Mark occurring in the relevant period on the designated services. In certain circumstances, it is possible for the allegation to be rebutted by a single instance of use provided it is conclusive.[16] It was observed by the Hearing Officer in Geo W. McPherson Nominees Pty Ltd v Remington Arms Company, Inc.[17] that:

   …there seems to be no reason why the opposition could not succeed in the present case if the opponent satisfies me that the sole invoice to the Overseas Distributors was "overwhelmingly convincing proof" contemplated by Wilberforce J in "Nodoz" case, supra.

   [16] Nodoz Trade Mark (1962) RPC 1 [at 7] per Wilberforce J and qualified in E & J Gallo Winery v Lion Nathan Australia Pty Ltd at [64].

   [17] Geo W. McPherson Nominees Pty Ltd v Remington Arms Company, Inc [1999] ATMO 101

7. Many of the documents are inconclusive but there are others before me that do satisfy, on the balance of probabilities that the Opponent has established use of the Trade Mark occurring within the relevant period. That use of the Trade Mark falls under the broad heading of ‘management consultancy’ and (with reference to the specification of services) especially for those services provided internationally.

8. As I have found that trade mark use has been established, I need not consider the exercise of the discretion under section 101(3) of the Act. As a result, I simply note the Applicant’s submissions in that regard and its references to the cases of Austin, Nichols & Co Inc v Lodestar Anstalt[18] and Karoun Dairies S.A.L. v Karoun Dairies Inc.[19] The discretion under the Act is largely unfettered and if there were any doubt regarding Trade Mark use on all the designated services, I note that the discretion (if exercised) specifically allows the Registrar to decide not to remove the Trade Mark if there has been use on similar services or closely related goods.[20]

   [18] [2012] FCAFC 8.

   [19] [2013] ATMO 28.

   [20] See subsection 101(4) of the Act.

Decision

1. I refer to section 101 of the Act and find that use of the Trade Mark has been established on the designated services within the relevant period. Accordingly, the application for removal of trade mark registration no. 985083 is dismissed.

Costs

1. The Opponent has been successful in the matter. I award costs against the Applicant to the extent allowed under Schedule 8 of the Trade Marks Regulations 1995.

Heath Wilson
Hearing Officer
Trade Marks Hearings
5 September 2013