Shan Patterson v Harold Van Haltren

[2025] ATMO 22

TRADE MARKS ACT 1995

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

Re:Opposition by Shan Patterson to application under section 92 of the Trade Marks Act 1995 (Cth) by Harold Van Haltren to remove trade mark number 2114375 (11, 37, 40) - GERMII - in the name of Shan Patterson

Delegate:

Louise Tuohy

Representation:

Removal Opponent: Shan Patterson

Removal Applicant: Harold Van Haltren

Decision:

2025 ATMO 22

Trade Marks Act 1995 (Cth) – application under section 92 – section 92(4)(a) – intention in good faith to use not established – trade mark to be removed from the Register of Trade Marks

Background

1. On 2 August 2023 Harold Van Haltren (‘Removal Applicant’) filed an application under s 92(4)(a) of the Trade Marks Act 1995 (Cth)[1] (‘Removal Application’) seeking complete removal from the Register of Trade Marks (‘Register’) of the following registered trade mark in the name of Shan Patterson (‘Removal Opponent’):

   [1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the  Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

   Trade mark number:  2114375

   Trade mark:  GERMII (‘Trade Mark’)            

   Filing date:  25 August 2020 (‘Relevant Date’)

   Specification:               Class 11:  Sterilizers; Sterilizing apparatus; Sterilizing devices; Sterilizing machines; Ultraviolet irradiators

   Class 37: Disinfection of premises against bacterial infestation; Germ reduction services

   Class 40: Decontamination of hazardous materials; Surface treatment services

   (‘Registered Goods/Services’)

2. The Removal Opponent filed a Notice of Intention to Oppose the Removal Application on 25 October 2023, followed by its Statement of Grounds and Particulars (‘SGP’) on 25 November 2023. On 9 January 2024 the Removal Applicant filed a Notice of Intention to Defend the Removal Application.

3. The Removal Opponent filed the following declaration as evidence in support (‘EIS’):

   ·Declaration of Shan Patterson, made on 9 April 2024 with Exhibit 1 (‘Patterson 1’).

4. The Removal Applicant filed the following declaration as evidence in answer (‘EIA’):

   ·Declaration of Harold Thomas Van Haltren, made on 15 July 2024 with Exhibits A to E (‘Van Haltren’).

5. The Removal Opponent filed the following declarations as evidence in reply (‘EIR’):

   ·Declaration of Shan Patterson, made on 24 September 2024 with Exhibit 1 (‘Patterson 2’).

   ·Declaration of Lisa Patterson, made on 24 September 2024 (‘LP’).

6. Once time for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing. The Removal Opponent requested a decision without a hearing and paid the appropriate fee. The matter has been allocated to me to determine as a delegate of the Registrar of Trade Marks for a decision based on the written record. I make my decision based on the particulars set out in the SGP, the EIS, EIA and EIR.

   Legislative framework

7. Part 9 of the Act deals with removal of trade marks form the Register due to non-use. The Removal Applicant nominated s 92(4)(a) as the ground for removal. Section 92(4)(a) provides:

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

   (a)  that, on the day on which the application for the registration of the trade mark was filed, the Removal 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;

8. The Removal Opponent bears the onus of rebutting the allegation under s 92(4)(a) on the balance of probabilities.[2] This onus is pursuant to s 100 which relevantly provides:

   [2] Pfizer Products Inc v Karam [2006] FCA 1663 (Gyles J).

   100  Burden on Removal Opponent to establish use of trade mark etc.

   (1)  In any proceedings relating to an opposed application, it is for the Removal 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 Removal Applicant for registration had no intention in good faith:

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

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

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

   in relation to the goods and/or services to which the opposed application relates (relevant goods and/or services); or

   (b)  any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services; or

   […]

   (2)  For the purposes of paragraph 1(b), the Removal Opponent is taken to have rebutted the allegation that the trade mark has not, at any time before the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

   (a)  the Removal Opponent has established that the trade mark or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services before that period; or

   (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

   (i)  the Removal Opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee in relation to those goods or services before that period and that that use was in accordance with the terms of the assignment; and

   (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee before that period as having been a use of the trade mark in relation to those goods or services by the registered owner.

   Evidence

9. A summary of the evidence filed in this matter is set out below.

   EIS

10. In Patterson 1, Mr Patterson states that he ‘had operated under the business associated with the trademark GERMII for 6 months, engaging in activities such as engineering and building UV-C irradiation sanitisation devices, building and marketing the business’. Mr Patterson states that the Removal Applicant, Mr Van Haltren was formerly associated with his business as a partner.

11. Mr Patterson contends that the circumstances leading to the Removal Application are rooted in a series of egregious actions perpetrated by Mr Van Haltren, and that ‘[these] actions have inflicted significant harm upon [himself], both personally and professionally resulting in severe damage to [his] business reputation, personal well-being, and financial stability’.

12. Mr Patterson declares that as ‘a consequence of Mr Van Haltren's unlawful activities and the resultant turmoil,’ he has ‘been unable to utilize the trademark GERMII effectively, as doing so would only serve to perpetuate the harm inflicted upon’ himself and his business.

13. Mr Patterson states that despite being unable to utilise the Trade Mark actively, he ‘affirms [his] continued ownership and intention to use it once the legal proceedings against Mr Van Haltren are resolved and [his] business operations can resume unhindered’.

14. Mr Patterson states his plans for future use of the Trade Mark lie in his ownership of Australian patent number 2020104080 for a ‘Focussed High Output UVC Irradiation Cartridge’ designed for utilisation in UV-C irradiation sanitization devices and his engineering blueprints showcasing the development and customisation of bespoke UV-C sanitisation devices tailored to specific needs and applications. Exhibit 1 to Patterson 1 comprises an undated example of four engineering designs for UV-C sanitisation devices featuring the Trade Mark and a photograph of Mr Patterson sitting behind a finished lamp device featuring the following trade mark (‘Germii logo trade mark’).

15. Furthermore, Mr Patterson claims that he has formally registered a business entity and recruited proficient sales and marketing teams who remain on standby awaiting the resolution of the legal issues with Mr Van Haltren. Mr Patterson states that he has ‘manufactured sanitization equipment and intend[s] to market [his] line of Germii products to [his] clients, pending the cessation of Mr Van Haltren trading with [the Trade Mark]’. 

    EIA

16. In Van Haltren, Mr Van Haltren states that he filed the Removal Application on the basis that, at the time the Trade Mark application was filed, the Removal Opponent had no intention in good faith to use the Trade Mark because at the filing date the Removal Opponent knew he was not the rightful owner.

17. Mr Van Haltren states that on or around April 2016, the term GERMII was coined by himself and Dr Taghi Denpaser in Papua New Guinea. GERMII is a colloquialism used to abbreviate Germicidal Irradiation.

18. Mr Van Halltren declares that he is the sole director of the company ‘Gaia Germicidal Irradiation Technologies Pty Ltd’ (‘GAIA’).[3] Mr Van Haltren states that on 20 March 2020 GAIA registered the business name GERMII with the Australian Securities and Investments Commission (‘ASIC’)[4]. Mr Van Haltren states that the design of the Germii logo trade mark occurred at around the same time. 

    [3] Van Haltren, Exhibit B, comprises a current organisational extract from ASIC showing that GAIA  was registered on 17 June 2004 and lists Mr van Haltren as the sole director.

    [4] Van Haltren, Exhibit A.

19. Mr Van Haltren states that between approximately January 2020 and June 2020, the Removal Opponent and himself operated the GAIA business selling and promoting ultraviolet irradiators, decontamination apparatus, services for the sterilising of goods and equipment, surface treatment services and related services (‘GERMII Goods and Services’) under the GERMII trade mark.

20. Mr Van Haltren attests that on or around 1 May 2020 GAIA (trading as GERMii UV-C Pathogen Mitigation), sent a commercial proposal document to Ambulance Victoria (‘AV’) proposing to clean ambulance vehicles. On or around 10 May 2020 GAIA was subsequently engaged by AV based on its proposal. Exhibit C to Van Haltren comprises a copy of the proposal entitled UV-C Germicidal Irradiation of Ambulance Victoria Vehicles dated 1 May 2020. The proposal features the GERMII trade mark and GERMII logo trade mark used in relation to the GERMII Goods and Services. Exhibit D to Van Haltren comprises a copy of an invoice for irradiation treatment services issued by GAIA to AV dated 28 May 2020.

21. Mr Van Haltren declares that by early July 2020 the Removal Opponent’s relationship with GAIA irrevocably broke down and his business relationship with the Removal Opponent ended. On 6 May 2021 Mr Van Haltren founded the company ‘Germii – Pathogen Mitigation Pty Ltd’ (‘Germii – PM’).[5] Mr Van Haltren claims that GAIA assigned its common law rights in the GERMII trade mark to Germii-PM.

    [5] Van Haltren, Exhibit E, comprises a current organisational extract from ASIC showing that Germii-PM was registered on 6 May 2021 and lists Mr van Haltren as the sole director.

22. Mr Van Haltren states that at the time the Removal Opponent applied to register the Trade Mark it was aware that the Trade Mark was the intellectual property of GAIA because the Removal Opponent had been involved in the sale of goods and services under the Trade Mark with GAIA, prior to the relationship breakdown.

    EIR

23. In Patterson 2, Mr Patterson sets out a timeline of events regarding his business activities and personal dealings with Mr Van Haltren dating from January 2020 to September 2024. Mr Patterson states that he was initially in partnership with Mr Van Haltren in another business for which they established a joint venture for the development of a computer services/asset management business.[6] During this tenure, Mr Patterson states that he conceptualised the GERMII brand for a sanitisation service to kill COVID-19 pathogens.

    [6] The joint venture was entered between MITSEADRAGON FLEET SERVICES PTY LTD and MULTI R IT PTY LTD. The joint venture was MULTI R IT SCIROCCO JV PTY LTD, for the development of a computer services/asset management business.

24. Mr Patterson states that on 17 March 2020 he created the original branding, font and colour set with the online tool (BrandMark.io) and researched and created content for an initial service offering with his wife Lisa Patterson. 

25. On 20 March 2020 Mr Patterson states that he registered the business name GERMII under the pre-established entity MITSEADRAGON FLEET PTY LTD (‘MIT’) later renamed to GAIA. Mr Patterson declares that he was listed as a shareholder of MIT with a 49% share on 15 January 2020, and Mr Van Haltren was listed as the sole director as of 1 February 2018.[7]

    [7] Van Haltren, Exhibit B.

26. Mr Patterson states that he collaborated with Mr Shane Thompson, who was also involved with GAIA, on a UV-C lamp product to be used for sanitisation purposes and developed the first prototype devices. Mr Patterson states that Mr Van Haltren made no contribution to the prototype design or to the intellectual property.

27. Mr Patterson states that he took the lead in establishing GAIA’s sanitisation business. Mr Patterson attests that between April to August 2020 Mr Van Haltren took over the business operations of GAIA and he was forced to step back from his role in developing the business due to the deterioration of work relations with Mr Van Haltren.

28. Mr Patterson avers that on 20 August 2020 in an email entitled “Mr Shan Patterson”, Mr Van Haltren notified staff of Mr Patterson’s departure from GAIA. Mr Patterson states that on 25 August 2020 in order to protect his interests and intellectual property, he registered the Trade Mark.

29. In LP, Lisa Patterson affirms her involvement in the development of the brand called GERMii and declares the following:

    ·On the evening of 17 March 2020, I assisted my husband, Shan Patterson, in creating and developing the GERMii brand.

    ·During this time, we collaboratively created a document titled “GERMIii – Onsite Commercial and Industrial Sanitisation Services” which outlines the services and objectives of the GERMii brand.

    ·The brand name “GERMii” was conceived by Shan Patterson, derived from a combination of the words “Germicidal” and “Irradiation”.  

    Discussion

30. Under s 92(4)(a) the Removal Opponent must establish that at the Relevant Date, the Removal Opponent had an intention in good faith to use the Trade Mark in Australia or authorise the use of the Trade Mark in Australia or to assign the Trade Mark to a body corporate for use by the body corporate in Australia, or that it had in fact used the Trade Mark in good faith earlier than one month before the Removal Application was filed.

31. In the SGP the Removal Opponent particularises the ground for removal as follows:

    I intend to use this trademark as a brand name for a germicidal irradiation lamp I have developed and patented. This was the original intention of the trademark, and this has been hijacked by Mr Harold Thomas Van Haltren (who filed for removal due to non-use).

    I retain IP rights for the "FOCUSSED HIGH OUTPUT UVC IRRADIATION CARTRIDGE", patent number 2020104080.

    As a result of prior dealings with Mr Van Haltren I have been dealt significant financial hardship. This has hindered my abilities to seek legal reparations, however legal proceedings in response to his unlawful misuse of my trademark are in progress.

    Upon resolution of these legal proceedings I intend to be releasing my lamp with the aforementioned cartridge under the germii brand name after a full damage analysis can be done.

    Mr Van Haltren sacrificed my interests as shareholder in the original trading entity "Germii".

    Mr Van Haltren further made significant and graphic threats targeted at myself, my wife and children, requiring I successfully sought a violence restraining order to protect myself and my family.

    These actions completely removed any ability I had to use my trademark at this time, until I am able to proceed with formal litigation.

32. Though the onus is, in terms of s 100, on the Removal Opponent in this matter, that onus is not particularly arduous. In Aston v Harlee Manufacturing Co, Fullagar J observed:

    [,,,] the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on an opposition or on a motion to expunge, the burden must rest on the opponent, or the person aggrieved, of proving the absence of intention. Again, I do not think that “intention” in this connexion ought to be regarded as meanings an intention to use immediately or within any limited time.[8]

    [8] [1960] HCA 47; (1960) 103 CLR 391; [1960] ALR 605; 34 ALIR 242, [21] (‘Aston’).

33. While this observation was made in a proceeding under the Trade Marks Act 1955 (Cth), where the onus was on an applicant for removal, the principle has been held to be sound under the Act. In Structureco Inc v Starite Distributors Pty Ltd, Hearing Officer Forno said:

    Although the opponent to removal does bear the initial onus, in accordance with the legislation, I think that, in the case of applications for removal under s 92 (4)(a), where the primary allegation regards the state of mind of an applicant for registration about whether it intends to use a mark in good faith, then that onus is not high. I believe that it is so low that it can be overcome if the opponent or its agent states that it was the case that the applicant for registration had an intention to use the mark in good faith. The onus should then shift to the removal applicant to support its case – perhaps by the production of some evidence which might support a circumstantial case of a lack of good faith, or by some other means.[9]

    [9] [2000] ATMO 31.

34. In the SGP the Removal Opponent, Mr Patterson, has made a clear statement that he intends to use the Trade Mark as a brand name for a germicidal irradiation lamp he developed and patented. Mr Patterson further contends that as a consequence of his ongoing legal actions against the Removal Opponent, he has been unable to utilise the Trade Mark effectively and affirms his intention to use the Trade Mark. Mr Patterson claims that he has taken steps to formally register a business entity and to recruit sales and marketing teams who remain on standby awaiting the resolution of the legal issues against the Removal Opponent. Mr Patterson declares that he has manufactured sanitisation equipment and intends to market his line of products featuring the Trade Mark to his clients.

35. The making of the application for a trade mark itself has long been regarded as prima facie evidence of intention to use.[10] In this case the Removal Opponent has filed the application for trade mark registration, and has made statements regarding his intention to use the Trade Mark for commercial purposes. Taken together, this is sufficient evidence to establish an intention to use the Trade Mark and to shift the onus to the Removal Applicant to present evidence that the Removal Opponent lacked the requisite intention.

    [10] See Aston [21].

1. The Removal Applicant, Mr Van Haltren states that at the time Mr Patterson applied for the Trade Mark he was aware that the Trade Mark was the intellectual property of GAIA. Mr Van Haltren declares that Mr Patterson was conscious of the sale of goods and services under the Trade Mark by GAIA prior to the breakdown of their working relationship and his departure from the GAIA business. In support of Mr Van Haltren’s contentions, there is evidence that GAIA (trading as GERMii UV-C Pathogen Mitigation), sent a commercial proposal document dated 1 May 2020 to AV proposing to clean ambulance vehicles. The proposal features the Trade Mark and GERMII logo trade mark used in relation to the GERMII Goods and Services which are the same or similar as the Registered Goods and Services. The evidence of use of the Trade Mark includes a copy of an invoice for irradiation treatment services issued by GAIA to AV dated 28 May 2020.

2. In this matter both parties claim to be the first to conceptualise the Trade Mark, however there is no evidence that either party was the first to use or authorise the use of the Trade Mark. Although Mr Patterson states he was the one to register the business name GERMII with ASIC, the business name is registered to GAIA formerly MIT.  

3. In regard to use of the Trade Mark, Mr Van Haltren has provided clear evidence that GAIA was the first to use the Trade Mark in relation to the Registered Goods and Services in its proposal to AV and subsequent provision of irradiation treatment services.

4. Mr Patterson states that he applied to register the Trade Mark in order to protect his interests and intellectual property, however his interests appears to be in his patent for a UV-C sanitisation device and obtaining a patent does not entitle the owner to trade mark rights as the product can have any trade mark applied to it. Furthermore, as a result of Mr Patterson’s involvement with GAIA before the working relationship between the parties broke down irretrievably, he would have been aware that the Trade Mark was used by GAIA in relation to the Registered Goods and Services.

5. As such I regard Mr Patterson’s intention when applying for the Trade Mark was to frustrate the use of the Trade Mark by GAIA and by association the Removal Opponent as the sole director of GAIA and director of Germii-PM.

6. While there is a low burden placed on the Removal Opponent in an application under s 92(4)(a), I find that the Removal Opponent has not satisfied the onus in showing that on the balance of probabilities he had an intention to use the Trade Mark in relation to the Registered Goods and Services in good faith.

7. The grounds for removal under s 92(4)(a) have been established in relation to the Registered Goods and Services.

   Decision

8. The Removal Applicant has been successful in its Removal Application. I direct that trade mark registration 2114375 to be removed from the Register for all of the Registered Goods and Services. If the Registrar is served with a notice of appeal within the relevant timeframe, I direct that the disposition of the Removal Application should be in accordance with the Court’s order or direction.

   Costs

9. Both parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Removal Opponent under s 221 in line with Schedule 8 of the Regulations.

   Louise Tuohy

   Hearing Officer

   Oppositions and Hearings

   Trade Marks and Designs

   30 January 2025