Terranora Group Management Pty Ltd v Rise Projects Pty Ltd

[2024] ATMO 62

TRADE MARKS ACT 1995

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

Re:Opposition by Terranora Group Management Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by Rise Projects Pty Ltd for removal of trade mark numbers 1176231 (36) – RISE and 1176245 (42) – RISE – in the name of Terranora Group Management Pty Ltd

Delegate:

Nicholas Smith

Representation:

Opponent: Macpherson Kelley Pty Ltd

Applicant: Geoff Davidson of Halfords IP

Decision:

2024 ATMO 62

Trade Marks Act 1995 (Cth) - section 96 opposition: ss 92(4)(a) and (b) application for removal - Opponent’s evidence does not show use of the Trade Marks during the relevant period or obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Marks to be removed from the Register

Background

1. This decision is pursuant to two applications made on 29 September 2022 under ss 92(4)(a) and (b) of the Trade Marks Act 1995 (Cth) (‘Act’) by Rise Projects Pty Ltd (‘Applicant’) to remove the trade marks detailed below from the Register of Trade Marks.  The applications are made in respect of all the services for which the trade marks are registered, that is, the applications are for complete removal of the trade marks.

Registration No.	1176231
Lodgement date	15 May 2007
Services	Class 36: Advisory services relating to real estate ownership; advisory services relating to real estate valuations; appraisal of real estate; brokerage of real estate; commercial real estate agency services; leasing of real estate; management of real estate; property leasing (real estate property only); provision of information in relation to real estate; provision of information relating to property (real estate); provision of information relating to real estate; real estate administration; real estate agencies; real estate agency services; real estate consultancy; real estate valuations; accommodation letting agency; leasing of accommodation; letting of office accommodation; provision of housing accommodation; provision of long-term accommodation; provision of permanent housing accommodation; provision of permanent housing accommodation; rental of accommodation
Owner	Terranora Group Management Pty Ltd
Trade Mark	RISE

Registration No.	1176245
Lodgement date	15 May 2007
Services	Class 42: Internet cafe services; consultation in environment protection and environment design services; design of sports facilities; designing and planning of real estate subdivisions and developments; real estate planning; real estate surveys
Owner	Terranora Group Management Pty Ltd
Trade Mark	RISE

1. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Act or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.  Since the respective trade marks are identical, with identical priority dates, for the purposes of the decision, whenever appropriate, I shall treat the applications as concerning a single trade mark (the ‘Trade Mark’) registered for various services in classes 36 and 42 (‘Registered Services’)

2. Terranora Group Management Pty Ltd (‘Opponent’) has opposed the applications to remove the Trade Mark, filing Notices of Intention to Oppose removal and  Statements of Grounds and Particulars (‘SGP’) on 4 October 2022.  The Applicant filed Notices of Intention to Defend on 9 November 2022.

3. The parties filed the following evidence in this matter.  The same evidence in support (‘EIS’) is filed in respect of both marks, while the Applicant filed essentially identical declarations as the evidence in answer (‘EIA’), which I treat as the same evidence.

Declarant and Position	Date	Annexures or Exhibits
EIS
Godfrey Norman Mantle, director of the Opponent (‘Mantle declaration’)	25 January 20220F[1]	GM-01 to GM-06
EIA
Rema Saad, paralegal of Halfords IP, the Applicant’s Representative (‘Saad declaration’)	2 May 2023	RS-1 to RS-2
Evidence in reply
N/A

[1] The Mantle Declaration predates the application for removal and was prepared in respect of a related opposition proceeding. 

1. I note that the Opponent has made claims of confidentiality in information that is manifestly not confidential, such as the fact that it has hired consultants.  I note that, if a party considers a piece of information to be commercially sensitive it must identify that information with specificity and not make broad claims such as made by the Opponent.  If in my summary of the evidence, I have disclosed information that is sensitive, then this is an issue that has arisen by that party not specifically identifying that information as sensitive.

2. 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 26 July 2023 the Applicant requested a hearing by video-conference.  The matter was set down for a hearing on 19 March 2024 and the matter was allocated to me.  In line with usual practice, an email was sent to the parties on 30 January 2024 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent did not participate in the hearing.  The Applicant filed written submissions on 12 March 2024 (‘Applicant’s Submissions’).  At the hearing Geoff Davidson of Halfords IP represented the Applicant.

3. I am a delegate of the Registrar and the matter has been allocated to me to decide, which I have done, on the basis of the following relevant material, any oral submissions made by the parties and the evidence listed earlier in this decision:

   ·The Applications for Removal;

   ·The Notices of Intention to Oppose and SGP;

   ·The Applicant’s Submissions. 

   The Relevant Provisions

4. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 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:

      (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 section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

5. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 29 August 2022 (‘relevant period’).

6. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application for the Trade Mark,1F[2] and I confirm that five years since filing the application have in fact passed.

   [2] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1 pt 3 as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.

7. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 which provides, relevantly to this matter:

   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.

   […]

   (3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during 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 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 during 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 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 of the trade mark in relation to those goods or services during 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 during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

   (c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

8. I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.2F[3]

   [3] Pfizer Products Inc. v Karam [2006] FCA 1663 (Gyles J) and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52.

9. In accordance with s 101 I may decide to remove the Trade Mark from the Register for all or some of the services identified in the applications for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the applications for removal were made are established.

10. I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),3F[4] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.4F[5] Use of the Trade Mark by an authorised user (as defined by s 8) is taken to be use of the Trade Mark by the Opponent.5F[6] 

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

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

    [6] Act s 7(3).

11. The principles when a trade mark has been used were recently summarised in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, in which the High Court noted the following:

    Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark.

    Whether a sign has been "use[d] as a trade mark" is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not "as a trade mark" was in Irving's Yeast-Vite Ltd v Horsenail, where the phrase "Yeast tablets a substitute for 'Yeast-Vite'" was held to be merely descriptive and not a use of "Yeast-Vite" as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.

    The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.6F[7]

    [7] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).

    Discussion

12. Sections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal. Because of the specifics of these provisions paragraph (a) is considered to effectively merge with paragraph (b) once a trade mark has been registered for five7F[8] years.8F[9] As the Trade Mark had been registered for more than five years as at the date of the applications, I need only consider the applications for removal under s 92(4)(b) in this case. Therefore, to successfully oppose the applications the Opponent must establish that it has used the Trade Mark (or a substantially identical trade mark9F[10]) pursuant to s 100 (either through use or that there were circumstances that were an obstacle to use in the relevant period (per s 100(3)(c)). 

    [8] Or three years for trade marks filed from 24 February 2019 onwards see changes made in the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1, pt 3.

    [9] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off 6th edition, 2016 Thomson Reuters, [70.510].

    [10] Act s 100(3)(a) and discussed in AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).

13. If the Opponent fails to establish such use or an obstacle to use, I have discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register.

    Use of the Trade Mark in the relevant period

14. The Opponent’s evidence in this matter consists of the Mantle declaration.  The Mantle declaration claims that the Opponent is developing land in the Bilambil Heights area in New South Wales and has engaged consultants for this purpose.  Between 2016 and 2019 the Opponent created various project documents and master plans in respect of the project.  It has obtained various approvals from government authorities for its project.  The Mantle declaration states that since at least 2009 the Opponent has used the Trade Mark to promote its property development, known as Rise, including in respect of brochures distributed from 2013 to 2021 and in a newspaper article published in 2009.

15. The exhibits to the Mantle declaration display project documents, government approvals, a newspaper article and a brochure featuring the Trade Mark.  For example, the exhibits include a concept plan prepared by, or for, the Opponent referring to the Rise Estate dated May 2010 and a project report dated February 2010.  Exhibit GM-05 consists of a single article dated 7 April 2009 that refers to a new development called Rise, being a $1.3 billion master-planned community that will take 10 to 12 years to complete.  The brochure features the Trade Mark and details of the property development that the Opponent or the Mantle Group is behind. 

16. The Saad declaration, filed as EIA, annexes two media articles dated 19 January 2017 and 20 November 2022respectively, concerning the former Terranora Lakes Country Club, being the location for the proposed Rise development.  The 2017 article refers to the slow pace of development of the property and the fact that the Terranora Lakes Country Club is derelict.  The 2022 article refers to the sale of part of the property that was formerly the site of the Terranora Lakes Country Club from the Opponent to a third party and that the Opponent had been seeking to sell the site for a number of years.

17. In viewing the evidence, I am satisfied that the Opponent at one stage intended to engage in property development of a property to be known as Rise.  The Opponent has created a number of documents featuring the Trade Mark and engaged in discussions with the New South Wales government and local council for this purpose.  However, each of the documents substantiating these activities pre-date the relevant period.

18. The Opponent has also (apparently in 2013) created brochures in English and Mandarin to promote the Rise development, that feature the Trade Mark.  It has sent these brochures to approximately 35 entities over an 8-year period, some of whom may have been overseas (noting that some of the brochures were in Mandarin and are clearly targeted at the overseas investor market).  Thirty-three of those entities were sent brochures prior to the relevant period, with two brochures allegedly sent in May 2021. 

19. In summarising the evidence, I note that there is no documentary or other evidence of any progress of the property development concerning the former Terranora Lakes Country Club in the relevant period.  The only evidence that relates to the relevant period was the statement that the Opponent has sent brochures, apparently from 2013 (the brochures refer to construction beginning in 2016/17) to two individuals in 2021 in circumstances where it is not clear those individuals are located in Australia.  Finally, there is correspondence in 2021-22 regarding the sale of part of the site (including correspondence showing the Opponent receiving services in connection with the sale of part of the site), however this correspondence does not show the use of the Trade Mark for the Registered Services.

1. The onus under s 100 is for the Opponent to show evidence of use or authorised use of the Trade Mark by the owner of the mark in the relevant period for the Registered Services.  Presumably, if the Opponent had used the Trade Mark for any of the Registered Services in the relevant period such evidence would be within its possession.  The sum total of the evidence of use is the assertion that the Opponent has sent brochures featuring the Trade Mark to two individuals, in circumstances where the individuals may not be located in Australia (the Opponent offers brochures in the Mandarin language that refer to purchases of property from overseas investors).  I refer to my comments in paragraph 14 above about the need for high level of certainty when a party is relying on limited examples of use.  In the circumstances where the Applicant has put on evidence that the Opponent’s development is, in essence, inactive, and where the Opponent could have but has chosen not to provide details of the locations of the two prospective investors who received brochures in 2021 (as well as documentary evidence [as opposed to assertions] that the brochures were actually sent to those individuals), I am not satisfied that the Mantle declaration shows evidence of use of the Trade Mark for the Registered Services (in Australia) in the relevant period.

2. I note that even if the above conclusion is incorrect there is little or no evidence that the Opponent has provided any of the Registered Services under the Trade Mark.  The Opponent has, prior to the relevant period, sought to develop a property to be known as Rise.  While this conduct may have involved obtaining various services relating to the development from third parties, the acquisition of services does not show use of the Trade Mark for the Relevant Services.  Engaging in private property development, as the Opponent appears to have done for a period prior to the relevant period, does not amount to, for example, offering ‘real estate planning’ services under the Trade Mark, since the Opponent does not offer those services to third parties in the course of trade.  There is, in fact no evidence of the Opponent offering any of the Class 42 services under the Trade Mark.  Regarding the Class 36 services, there is no evidence of the Opponent offering any advisory, administration, valuation, management, or consultancy services in the course of trade to third parties under the Trade Mark.  It has never offered real estate agency services, nor has it sold, rented or come close to selling or renting property; there being no evidence of construction (or even preparatory steps for construction such as destruction of the previous buildings) commencing.  Finally preparing and distributing brochures seeking investment in a potential development known as RISE is not the use of the Trade Mark for ‘provision of information in respect of real estate’ under the principles of s 17; again, those services are not offered to third parties under the Trade Mark; rather the Opponent is simply advertising its own property (or potential property) that it wishes to sell.

   Obstacles to use

3. The Opponent does not formally submit that there have been any matters that amount to an obstacle to the use of the Trade Mark for the Registered Services in the relevant period. Pursuant to s 100(3)(c) and in the interests of completeness I note that I have been unable to identify any such obstacles.  As there is no obstacle to use of the Trade Mark, it is therefore necessary to consider whether I should exercise the discretion to allow the Trade Mark to remain on the Register for any of the Registered Services.

   Registrar’s Discretion

4. To exercise the discretion in s 101(3) I must be positively satisfied that, despite the lack of use or obstacles to use, it is reasonable to not remove the Trade Mark in respect of the Registered Services.10F[11] The burden of persuasion in this regard falls on the Opponent.11F[12]

   [11] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ).

   [12] Ibid.

5. The Opponent has made no submissions in respect of the discretion. I therefore do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of any of the Registered Services.

   Decision

6. The Opponent has not established its opposition to removal. Accordingly, I direct that trade mark numbers 1176231 and 1176245 be removed from the Register one month from the date of this decision. 

   Costs

7. The Applicant has been successful in relation to the applications for removal of trade mark numbers. 1176231 and 1176245 and has requested its costs. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs in respect of trade mark number 1176231 against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations. In respect of trade mark number 1176245 I award costs against the Opponent to be taxed in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.12F[13] 

   [13] [2001] ATMO 78 (Hearing Officer Williams).

   Nicholas Smith

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   9 April 2024