SIPM Pty Limited v Siera Group Pty Ltd

[2024] ATMO 39

TRADE MARKS ACT 1995

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

Re:Opposition by SIPM Pty Limited to an application under section 92 of the Trade Marks Act 1995 (Cth) by Siera Group Pty Ltd to remove trade mark number 1529536 (class 37) - SIERRA PROJECTS - in the name of SIPM Pty Limited

Delegate:

Benjamin Goldsworthy

Representation:

Removal Opponent: Gorton IP

Removal Applicant: Redchip Lawyers Pty Ltd

Decision:

2024 ATMO 39

Trade Marks Act 1995 (Cth) – application under section 92(4)(b) – use of trade mark not established in the relevant period – discretion not exercised for any services –– registration to be removed

Background

1. This matter concerns an application under s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’)[1] seeking removal of a trade mark from the Australian Register of Trade Marks (‘Register’) for non-use. I extract the trade mark below:

Trade mark number:     1529536

Trade mark:  SIERRA PROJECTS (‘Trade Mark’)

Owner:  SIPM Pty Limited

Filing date:  5 December 2012

Services:  Class 37: see schedule 1 to these written reasons (‘Registered Services’)

[1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).

1. On 10 May 2021 Siera Group Pty Ltd (‘Removal Applicant’) filed a request for removal of the Trade Mark for non-use under s 92(4)(b) for all of the Registered Services.

2. On 9 July 2021 SIPM Pty Limited (formerly Sidoti PM Pty Limited)[2] (‘Removal Opponent’) filed a Notice of Intention to Oppose the application for removal. On 9 August 2021 the Removal Opponent filed its Statement of Grounds and Particulars. On 18 October 2021 the Removal Applicant filed its Notice of Intention to Defend.

   [2] The opposition thereafter proceeded in the name ‘SIPM Pty Limited’.

3. On 20 January 2022 the Removal Opponent filed its Evidence in Support (‘EIS’) being a declaration of Rochelle Sidoti, director at the Removal Opponent, dated 20 January 2022, with Annexures A to E (‘Sidoti’). On 29 September 2022, the Removal Applicant’s attorney advised by letter that the Removal Applicant would not be filing Evidence in Answer.

4. On 11 October 2022, the Removal Applicant requested to be heard by way of written submissions only. The Removal Opponent did not request to be heard. On 22 November 2023, the Removal Applicant filed written submissions of its Attorney. I am to decide the matter as a delegate of the Registrar of Trade Marks.

Relevant period and onus

1. Section 92 relevantly provides:

   92  Application for removal of trade mark from Register etc.

   …

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

   …

   (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.

2. Sufficient time has passed for s 92(4)(b) to be alleged.[3] By ss 92(4)(b), 100(1)(c) and 100(3) the Removal Opponent must establish use of the Trade Mark in Australia in the three year period ending on 10 April 2021 (‘Relevant Period’) or that the Trade Mark was not used in relation to the Registered Services because of circumstances that were an obstacle to the use of the Trade Mark during the Relevant Period. The Removal Applicant alleges that there has been no use of the Trade Mark in relation to any of the Registered Services in the Relevant Period. The allegation can be rebutted by establishing use by the owner of the Trade Mark or by an ‘authorised user’.

   [3] Section 93(2).

3. It is the Removal Opponent who must rebut the allegation of non-use.[4] Any findings of fact are based on the civil standard of the balance of probabilities.[5]

   [4] Section 100(1)(c).

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

4. ‘Use as a trade mark’ is use of a trade mark as a badge of origin in the sense that it indicates a connection in the course of trade between the services and the person who applies the sign to those services.[6] This does not require the actual sale or purchase of the services.[7] A commercial dealing in relation to the services under, or by reference to, the sign is sufficient to constitute ‘use as a trade mark’. A single bona fide use during the Relevant Period is sufficient for the Removal Opponent to discharge the onus,[8] although if only a single instance of use is alleged it should be established by, ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[9]

   [6] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).

   [7] Oakley Inc v Franchise China Pty Ltd [2003] FCA 105, [29] (Drummond J).

   [8] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

   [9] Nodoz Trade Mark [1962] RPC 1, 7 (Wilberforce J).

5. If the requisite use is not established, in accordance with s 101 I may decide to remove the Trade Mark, or if satisfied it is reasonable to do so, decide to not the remove it. I explain this discretion in more detail further below.

Evidence

1. Sidoti states that the Removal Opponent’s managing director, Michael Sidoti, has been in the project management, development management and top tier construction services business for more than 25 years.

2. The activities of the Removal Opponent are summarised by Annexure B to Sidoti, which is an extract of the website (‘Removal Opponent’s Website’) listing the services that are apparently offered by the Removal Opponent. This extract is dated outside the Relevant Period.

3. The Trade Mark does not appear on the Removal Opponent’s Website at Annexure B. Rather, the following trade mark appears in the header:

(‘SIPM Trade Mark’)

1. The services mentioned on the Removal Opponent’s Website are listed as follows:

   • Project management: project and programme planning; project team selection, engagement and management; design planning and consent procurement; delivery strategies and methods; construction method planning and programming; buildability advice and value engineering; tender procurement, evaluation and contract negotiation; management of contractor and consultant activities; contracts management and administration; costs management and reporting; project risks assessment and control; tenant and end user integration; multiparty/multi discipline negotiations; direct management of design and construct activities; and project recovery / work through.
   • Stakeholder representation: representing stakeholders such as, property owners, financiers, tenants and end users to implement objectives and drive compliance throughout the delivery process.
   • Independent review, advisory & due diligence: strong project delivery skills underpin SIPM’s ability to provide reliable independent review, advisory and due diligence type services. Such services have been delivered by SIPM’s principal acting for high profile developers, financiers, top-tier builders and government organisations in a wide variety of projects.

2. Sidoti asserts that the Removal Applicant seeks to file a trade mark for the word ‘Siera’.[10] Sidoti adds that activities were reduced during the period of the Covid-19 pandemic and the Removal Opponent intends to continue to use the Trade Mark.[11]

   [10] Sidoti, [9].

   [11] Sidoti, [10].

3. An Australian Securities and Investments Commission company extract for the Removal Opponent is at Annexure A (‘Company Extract’). An extract containing the Australian Business Number details for Removal Opponent is also provided at Annexure C (‘Extract of ABN Details’). It shows the business name SIERRA PROJECTS was registered for the Removal Opponent on 15 September 2011. A certificate of currency for professional indemnity insurance for the period 16 October 2018 to 16 October 2019 is at Annexure D. The insured is specified as: ‘SIPM Pty Limited (formerly Sidoti PM Pty Limited); SIPM Pty Limited t/as SIPM; SIPM Pty Limited t/as Sierra Projects’. The profession specified on the insurance is ‘project managers’ with other information under the heading ‘profession’ redacted.

4. Most relevant of the EIS appears to be Annexure E to Sidoti which is a tax invoice issued by the Removal Opponent and containing the ABN 75 150 318 255 (‘Invoice’). The Invoice displays the words ‘Sierra Projects’ at the top of the document under the name SIPM Pty Limited. The Invoice appears to have been initially dated 12 August 2021 for ‘PM Services’, with what appears to be a corrected date of 16 August 2021. There is otherwise no specification of the particular services relating to the Invoice. However, Sidoti states that the Invoice is for, ‘the [Registered Services] offered under the [Removal Opponent] and Trade Mark in relation to a project for 20+ high-end residential units in the Sydney CBD’.[12] The ‘invoice period’ of the Invoice is ‘July 2020-March 2021’.

Consideration

[12] Sidoti, [8].

Use of the Trade Mark in the Relevant Period

1. The closest thing to use of the Trade Mark shown in the evidence is the Invoice. Therefore, I first consider the Invoice. A sign is taken to be applied as a trade mark in relation to services if it is used ‘in an invoice, wine list, catalogue, business letter, business paper, price list or other commercial document’.[13] The words ‘Sierra Projects’ are in the Invoice. These words are substantially identical with the Trade Mark[14] and their use amounts to use as a badge of origin. The Removal Opponent’s name is also mentioned on the Invoice and appears as the issuer. I consider the use of the words ‘Sierra Projects’ on the Invoice to be use of the Trade Mark, or a trade mark substantially identical with the Trade Mark, in the course of trade by the Removal Opponent.

   [13] Section 9(1)(c)(ii).

   [14] Section 7(1).

2. The Removal Applicant submits that ‘PM Services’ is a vague reference. The Removal Applicant also notes that the Invoice was issued outside the Relevant Period and submits it should be disregarded on that basis alone. The Removal Applicant adds that no evidence of a request or order related to the Invoice is provided.

3. My understanding is that in the construction and project management industry the words ‘PM services’ are likely to refer to ‘project management services’. Sidoti directly states that the Invoice is for the provision of services relating to construction of more than 20 units in the Sydney Central Business District.[15] Based on the evidence before me, I consider it likely that the Invoice, where it mentions ‘PM services’, refers to project management services.

   [15] Sidoti, [8].

4. Whilst the invoice period is specified as being for July 2020 to March 2021, the Invoice was issued outside the Relevant Period. The reason for the Invoice being issued well after the invoice period and well outside of the Relevant Period is not explained. There is otherwise no evidence which corroborates the use of the Trade Mark within that Relevant Period and relating to the Invoice. Because of this the Invoice alone, or in combination with other evidence, does not satisfy me that the Removal Opponent has used the Trade Mark, or a trade mark which is substantially identical with Trade Mark, in relation to project management services, or any of the other Registered Services, in the Relevant Period.

5. The remaining evidence also does not assist the Removal Opponent. The extract of the Opponent’s Website shows use of only the SIPM Trade Mark which is not substantially identical with the Trade Mark. The certificate of insurance does not specify any particular trade mark under which the Removal Opponent which has been used, rather it simply mentions three business names. The Company Extract and Extract of ABN Details only provide information about business name registrations or a company registrations for the Removal Opponent. It is well established that a business name or name of a company do not establish use of a trade mark. The Removal Opponent does not otherwise provide any evidence of use of the Trade Mark, or a substantially similar trade mark, for any other Registered Services in the Relevant Period.

6. Accordingly, I am not satisfied that the Removal Opponent has used the Trade Mark or a substantially identical trade mark in relation to any of the Registered Services in the Relevant Period.

Obstacles to use

1. Sidoti asserts that the Removal Opponent’s activities were impacted by the Covid-19 pandemic, suggesting an obstacle to use of the Trade Mark. This statement rises no higher than an assertion and is not sufficient to demonstrate an obstacle to use of the Trade Mark. There is no evidence otherwise demonstrating any obstacle which prevented good faith use of the Trade Mark in relation to the Registered Services during the Relevant Period.

Registrar’s discretion

1. Section 101(3) provides me with a broad discretion to not remove the Trade Mark from the Register even where s 92 grounds have been established, provided I am satisfied it is reasonable to do so. I must consider whether this discretion should be exercised in relation to the Registered Services. However, the Removal Opponent need not establish ‘exceptional circumstances’.[16]

   [16] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934, [198] (Flick J) citing Kowa Co Ltd v Organon [2005] FCA 1282, [98] (Lander J).

2. Various factors are to be considered in applying s 101. In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd the Federal Court observed of s 101(3) and the relevant factors:

   [t]he following propositions are relevant to the exercise of this discretion:

   (1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter scope and purpose of Part 9 of the Trade Marks Act.

   (2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. ...

   (3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. ...

   (4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark.

   (5) The range of factors considered in the exercise of the discretion has included whether or not:

   (a) there has been abandonment of the mark;

   (b) the registered proprietor of the mark still has a residual reputation in the mark;

   (c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;

   (d) the applicant for removal had entered the market in knowledge of the registered mark;

   (e) the registered proprietors were aware of the applicant’s sales under the mark;

   (f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[17]

   [17] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (citations omitted).

3. Sidoti asserts that the Removal Opponent intends to use the Trade Mark in relation to the Registered Services and that its activities were impacted by the Covid-19 pandemic. As already mentioned, the Removal Opponent provides no further information about the impacts of the Covid-19 pandemic. It also provides no evidence above an assertion around intentions to use the Trade Mark. Overall, the Removal Opponent provides no compelling reason for the Trade Mark to remain on the Register for the Registered Services. I am also conscious of the public interest in the Register reflecting what is being use by traders.

4. Balancing the relevant considerations and noting all of the evidence, I am not satisfied that it is reasonable to exercise the discretion not to remove the Trade Mark for any of the Registered Services.

Decision

1. The Removal Opponent has not rebutted the allegation of non-use in respect of the Trade Mark and I am not satisfied it is reasonable to exercise the discretion to allow the Trade Mark to remain on the Register.

2. I direct that one month from the date of this decision registered trade mark 1529536 be removed from the Register.

3. If the Registrar is served with a notice of appeal within the relevant timeframe, the Trade Mark shall be treated in accordance with the decision of the court.

Costs

1. The Removal Applicant sought its costs. Costs will ordinarily follow the event. I award costs against the Removal Opponent in accordance with Schedule 8 to the Regulations.

Benjamin Goldsworthy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

29 February 2024

Schedule 1

Class 37: Advisory services relating to property development building and construction services; Advisory services relating to the renovation of property; Development of property (building and construction services); Property development (building and construction services); Property maintenance; Building project management; Building project management (building construction supervision); On site building project management; Advisory services relating to building construction materials; Advisory services relating to construction; Advisory services relating to the construction of buildings; Advisory services relating to the construction of civil engineering structures; Building (construction) supervision; Building and construction of real estate subdivisions and developments; Building and construction services; Building construction; Building construction advisory services; Building construction consultancy; Building construction supervision; Civil construction services; Civil engineering construction; Construction; Construction consultation; Construction information; Construction of buildings; Development of land (construction); Factory construction; Housing construction; Housing development (building and construction services); Landscaping (construction); On-site construction supervision; Project preparation relating to construction engineering; Providing information, including online, about building construction, and repair and installation services; Provision of construction advice; Provision of construction information; Provision of information in relation to building construction; Real estate development (building and construction services); Road construction; Supervision of building construction; Supervision of construction; Supervision of construction projects; Underground construction; Warehouse construction and repair; Advisory services relating to building; Advisory services relating to building refurbishment; Advisory services relating to the alteration of buildings; Advisory services relating to the repair of buildings; Building consultancy services; Building demolition; Building of apartment buildings; Building of commercial properties; Building of houses; Building of industrial properties; Building of offices; Building refurbishment services; Building repair; Building services; Demolition of buildings; Dismantling of buildings; Erection of pre-fabricated buildings; House building; Interior refurbishment of buildings; Maintenance and repair of buildings; Maintenance and repair of utilities in buildings; Maintenance of buildings; Painting and decorating of buildings; Project preparation relating to building renovation; Redevelopment of buildings; Refurbishment of buildings; Renovation of buildings; Restoration of buildings; Supervision of building repair; Supervision of building work; Wrecking of buildings (demolition)

(‘Registered Services’)