Spyval Pty. Ltd. atf the Valued Lives Trust v Valued Lives Foundation Ltd

[2024] ATMO 58

TRADE MARKS ACT 1995

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

Re:Opposition by Spyval Pty. Ltd. atf The Valued Lives Trust to registration of trade mark application 2225867 (35, 41, 43, 44, 45) – VALUED LIVES – in the name of Valued Lives Foundation Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: Self-represented Applicant: David Stewart of Bennett Litigation and Commercial Law
Decision:	2024 ATMO 58 Trade Marks Act 1995 (Cth) - section 52 opposition: ss 59 and 62A considered – neither established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Spyval Pty. Ltd. atf The Valued Lives Trust (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Valued Lives Foundation Ltd (‘Applicant’): 

Application Number:	2225867
Filing Date[1]:	4 November 2021
Services:	Class 35: Job placement services, return to work services, namely, job placement of employees recovering from injury and employment counselling services; medical transcription services; services for the preparation of medical reports, namely, medical transcription services; all of the foregoing provided as consultancy services to government departments in respect of government welfare programs; career assessment services; job search assistance services; job development assistance services; work experience services; subsidized employment services; resume development services Class 41: Early intervention services, namely, education services in the nature of classes for individuals with developmental disorders; pre-employment services, namely, career counselling services in the nature of providing advice concerning education options to pursue career opportunities; job readiness instruction and counselling services; occupational training services; career guidance services (education or training advice); interviewing skills assessment services; all of the foregoing provided as consultancy services to government departments in respect of government welfare programs Class 43: providing assisted living facilities Class 44: Healthcare; health counselling; illness rehabilitation services, namely, rehabilitation of drug addicted patients; injury rehabilitation services, namely, physical rehabilitation; occupational health and safety services, namely, therapeutic massage and physical rehabilitation services; providing exercise facilities for physical health rehabilitation purposes; rehabilitation services, namely, physical rehabilitation and physical therapy services; surgery rehabilitation services, namely, physical rehabilitation and physical therapy services; aged care services, namely, medical and nursing assessment services; geriatric health care services injury management; behavioural analysis for medical purposes; conducting of medical examinations for insurance purposes; consultancy and advisory services in relation to medical services; health care consultancy services, namely, medical consultations; medical advisory services; medical analysis services for diagnostic and treatment purposes; medical assistance; medical care services; medical clinic services; medical counselling; medical testing and medical analysis services for diagnostic and treatment purposes; medical equipment rental; medical examination of individuals for insurance purposes; medical health assessment services; medical services; provision of medical assistance; provision of medical facilities in the nature physical rehabilitation; provision of medical information; provision of medical services; provision of medical treatment; rental of medical equipment; rental of medical equipment and instruments; vocational rehabilitation, namely, physical rehabilitation; psychological assessment services; medicolegal health assessments; biopsychosocial rehabilitation, namely, physical rehabilitation; injury management, namely, physical rehabilitation; health risk assessment services; physiotherapy; disability support services, namely, health care consulting in the field of occupational therapy for persons with disabilities; all of the foregoing provided as consultancy services to government departments in respect of government welfare programs Class 45: Employment screening services, namely, background screening of current employees of others in the context; non-medical nursing assistance of activities of daily living, such as bathing, grooming and personal mobility; providing non-medical assisted living services for personal care purposes for assisting with daily living activities of disabled and elderly persons; social work services, namely, coordination of medical, legal, social and psychological services for disabled and elderly persons; pre-employment background screening services; all of the foregoing provided as consultancy services to government departments in respect of government welfare programs (‘Applicant’s Services’)
Trade Mark:	VALUED LIVES	(‘Trade Mark’)

[1] Also known in this decision as the ‘relevant date’.

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

2. Following the advertisement of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars (‘SGP’) on 25 May 2023. The SGP raised grounds of opposition under ss 59 and 62A. The Applicant filed a Notice of Intention to Defend on 25 July 2023.

   Evidence

3. The parties filed the following evidence in this matter however I will discuss the relevance and admissibility of the material later in this decision:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
None filed
Evidence in answer
David Francis Gibson, Director of the Applicant	5 February 2024	DG-1 to DG-11
Evidence in reply
Bronia Anne Holyoak, Director of the Opponent	6 April 2024	1 to 4

1. Once the time allowed for filing evidence had ended, the parties were given an opportunity to request an oral hearing or a hearing by written submissions.  On 30 April 2024 the Applicant requested a hearing by video-conference.  The matter was set down for a hearing on 18 February 2025 and the matter was allocated to me.  In line with usual practice, an email was sent to the parties on 4 December 2024 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 4 February 2025 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 11 February 2025 (‘Applicant’s Submissions’).  At the hearing David Stewart of Bennett Litigation and Commercial Law represented the Applicant. The Opponent did not appear.

2. At the same time the Opponent filed the Opponent’s Submissions the Opponent filed three additional documents with this office. One of them was a document filed as part of the evidence in reply which I discuss further below. The other two documents consisted of a presentation dated July 2020 and a letter dated November 2021 from the Opponent’s then lawyer to the Applicant in connection with the Trade Mark application. This material was not evidence properly filed as annexures to a declaration and hence did not meet the requirements of Reg 21.6. It was also filed well-out of time and there is no reason why this material could not have been filed as evidence in support. The Opponent did not, in its written submissions, make any argument or application that I should have regard to the material pursuant to my powers under Reg 21.15(4) and in the absence of compelling submissions from the Opponent I decline to have regard to this material that was filed in breach of multiple provisions of the Regulations.

3. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the   application was opposed has been established. 

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs and any oral submissions made by the parties.

   Grounds of Opposition, Onus and Standard of Proof, Evidence

4. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 59 and 62A of the Act. The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is 4 November 2021, being the filing date of the application in Australia (except in circumstances, not present here in which a different priority date is provided for in the Act).[4]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J), see also Trade Marks Act 1995 (Cth) s 29(1).

5. In the present case the Opponent did not file evidence in support of its grounds of opposition.  On 3 November 2023 this office provided notice to the Opponent that it had failed to comply with the evidence requirements.  The Opponent chose not to file any late evidence in support or any application for an extension of time in respect of that evidence. 

6. The Applicant then filed evidence in answer on 5 February 2024.  The Opponent then filed evidence in reply on 7 April 2024.  By definition, evidence ‘in reply’ must be limited to responding to issues and material raised in the evidence in answer.[5]

   [5] See Trade Marks Manual of Practice and Procedure, section 51.1, paragraph 1.3.

7. The Opponent’s evidence in reply consists of evidence that the declarant registered the business name Valued Lives in 2011 and supposedly provided pro bono administration services under that mark.  In addition, there is evidence that the declarant was the CEO of the Applicant from November 2016 to January 2022.  None of this material is proper evidence in reply in that it does not actually respond to the Applicant’s evidence,[6] rather this appears to be an attempt to file evidence in support 5 months after the deadline and after the Applicant filed its evidence in answer. The Opponent has provided no explanation for its conduct, submissions suggesting that the evidence filed was actually evidence in reply, or submissions that I should have regard to this material pursuant to my powers under Reg 21.15(4). Finally the Opponent failed to pay the fees required under the Regulations for filing a document purporting to be evidence after the period for filing that evidence.

   [6] I note that both parties acknowledge that the declarant was the CEO of the Applicant from 2016 to 2022 and the Applicant’s evidence annexes a copy of Ms Holyoak’s employment agreement.

8. For completeness I have considered whether it is appropriate to have regard to this material pursuant to Reg 21.15(4) or take any other procedural steps, such as providing the Applicant with the opportunity to file additional evidence in answer to the Opponent’s evidence and I do not consider it appropriate.  I note the absence of any explanation for the Opponent’s conduct, or explanation of the relevance of the material filed in evidence in reply.  I also consider that having regard to this material would be materially unfair to the Applicant, which has been denied the opportunity to respond to the Opponent’s material, and re-opening the evidence process would simply further delay and increase the costs of what is already a significantly delayed application.  While I have sympathy for the Opponent as a self-represented litigant, that sympathy does not enable me to allow the Opponent to obtain a forensic advantage by filing evidence the Applicant has no reasonable opportunity to respond to.  Finally, I note that the evidence in answer establishes that the Applicant, at the relevant date, had traded under and used the Trade Mark for at least a subset of the Applicant’s Services for 8 years, indicating that it is unlikely that at the relevant date it lacked the intention to use the Trade Mark, or that it applied to register the Trade Mark (which again, it was using and corresponded to its name) in bad faith.  

9. As such I do not have regard to any of the Opponent’s evidence. As the Opponent has filed no evidence I can have regard to, I have no hesitation deciding that the Opponent has not discharged the onus on it. Consequently, the Opponent has not to any extent established a ground of opposition under ss 59 or 62A of the Act.

   Decision

10. The Opponent has failed to establish the grounds of opposition it nominated in the SGP.  Trade mark application number 2225867 may proceed to registration not less than one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

    Costs

11. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under s 221 of the Act in the relevant amounts under Schedule 8 of the Regulations.

    Nicholas Smith
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    18 March 2025