The Revenue Gallery Pty Ltd v Michael Christopher Visone

[2018] ATMO 16

TRADE MARKS ACT 1995

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

Re:Opposition by The Revenue Gallery Pty Ltd to registration of trade mark application 1736104 (41) – Where fantasy meets reality - filed in the name of Michael Christopher Visone

Delegate:	Nicholas Smith Decision on the Written Record
Decision:	2018 ATMO 16 Trade Marks Act 1995 (Cth) - Section 52 opposition: s 59 considered – ground established – registration refused

Background

1. This is an opposition brought by The Revenue Gallery Pty Ltd  (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the trade mark subject of the application detailed below in the name of Michael Christopher Visone (‘Applicant’): 

Application Number:	1736104
Priority Date:	20 November 2015
Services:	Class 41: Arranging of entertainment; Booking of entertainment; Club entertainment services; Entertainment; Event management services (organisation of educational, entertainment, sporting or cultural events); Information services relating to entertainment; Live entertainment; Management of entertainment events; Management of entertainment services; Organising events for entertainment purposes; Organising of entertainment; Party planning (entertainment)  (‘Applicant’s Services’)
Trade Mark:	Where fantasy meets reality	(‘Trade Mark’)

1. Following the advertisement on 7 April 2016 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 3 June 2016 and a Statement of Grounds and Particulars (‘SGP’) on 1 July 2016. The SGP raised grounds of opposition under ss 41, 58 and 59 of the Act.

2. The SGP was assessed by this office as adequate and a notice was sent to the Applicant.  The Applicant filed a Notice of Intention to Defend on 24 August 2016. 

   Evidence and Submissions

3. The Opponent filed Evidence in Support of its opposition (‘EIS’) on 29 November 2016.  This evidence consists of a declaration made on 29 November 2016 by Aneel Flehan, a director of the Opponent, with Annexures 1 to 3 (‘Flehan Declaration’).   The Applicant did not file any Evidence in Answer.

4. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  By letter issuing from IP Australia on 15 May 2017 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to reply upon.  The Opponent filed its submissions on 14 June 2017 (‘Opponent’s Submissions’).  The Applicant did not file any submissions.

5. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued or dismissed, 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.

   The Opponent

6. The Opponent is a company that was incorporated in 2014 and is involved in the provision of adult entertainment services. 

7. The Flehan Declaration contain the following claims:

   ·    The term ‘where fantasy meets reality’ is a term in common use in the adult entertainment industry, both by the Opponent and third parties.  The Flehan Declaration exhibits various examples of the term’s use in promotional material.

   ·    The declarant has undertaken searches to identify any use of the Trade Mark by the Applicant and has been unable to identify any apparent use.  Furthermore given its descriptive nature, it cannot be the intention of the Applicant to use the Trade Mark as a trade mark, rather its use can only for illegitimate and speculative uses.

   Grounds of Opposition, Onus and Standard of Proof

8. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 41, 58 and 59. To successfully oppose the application the Opponent needs to establish at least one of those grounds. As will become apparent, the Opponent has successfully established a ground of opposition pursuant to s 59. Consequently, it is unnecessary that I consider the remaining grounds. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

9. The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  The date at which the rights of the parties are to be determined is 20 November 2015, being the filing date of the application (‘the Priority Date’).[3]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

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

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

   Discussion

   Section 59

10. Section 59 of the Act is reproduced below:

    59 - Applicant not intending to use trade mark

    The registration of a trade mark may be opposed on the ground that the applicant does not intend:

    (a)    to use, or authorise the use of, the trade mark in Australia, or

    (b)    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 specified in the application.

11. The relevant date for assessing the Applicant’s intention to use the Trade Mark is the filing date being 20 November 2015.[4]

    [4] See the discussion of the authorities in Foxtel Management Pty Ltd v 111Pix.com Limited [2012] ATMO 29, [31]. The relevant authorities are Suyen Corporation v Americana International Limited [2010] FCA 638; (2010) 87 IPR 262 (‘Suyen’) and Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 86 IPR 437. (‘Food Channel’).

12. The nature of the intention in s 59 was considered by Jacobsen J in Health World Ltd v Shin-Sun Australia Pty Ltd (‘Health World’) where he stated:

    In my view, the intention, or lack thereof, to which s 59 is directed, is a ‘real and definite intention’ of the applicant for registration, to use the mark publicly as a trade mark, although it is not necessary that the intention be immediate or within a limited time.[5]

    [5] [2008] 75 IPR 478, [160].

13. There is a presumption that where an application has been filed the applicant, has the requisite intention.  However:

    There is authority for the proposition that where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence, a finding of lack of intention may be made.

    The principle which underlies these authorities seems to me to be that the evidentiary onus shifts to the applicant for registration where an opponent makes a prima facie case of lack of intention to use the mark.[6]

    [6] Ibid [162]-[163] (citations omitted).

14. Jacobsen J also recognised the difficulty that an opponent has in establishing a ground under s 59, stating in the same case:

    The subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent usually make it difficult for an opposition or an application for rectification, to succeed on this ground.[7]

    [7] Ibid [161] (citations omitted).

15. In view of the authorities discussed above, the onus of establishing the ground of opposition pursuant to s 59 remains with the Opponent until it has established a prima facie case that on the relevant date the Applicant lacked the requisite intention.  If the Opponent establishes a prima facie case the onus then shifts to the Applicant for rebuttal.

16. Having considered the decisions of Dodds-Streeton J in Suyen, the Full Court in Food Channel, and Jacobson J in Health World the Delegate in Foxtel Management Pty Ltd v 111Pix.com Ltd stated:

    I note that [the authorities] all appear to agree that lack of intention might be inferred ‘where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence’. It is nevertheless clear from all three judgments that such an inference will not be drawn lightly. Jacobson J, for example, cited two such cases, being Phillip Morris Products SA v Sean Ngu (‘Phillip Morris’) and Tommy Hilfiger Licensing Inc v Tan (‘Phillip Morris’), both involving somewhat particular circumstances. In Phillip Morris the opponent had sought production of documentation substantiating various claims regarding its proposed use made by the applicant in a letter to the opponent’s attorneys, but the applicant neither responded to the Notice to Produce … nor did it file any written submissions or appear at the hearing. Tommy Hilfiger, for its part, was decided by the Hearing Officer concerned on the basis that the applicant’s intention had to persist beyond the filing date and thus that the investigations attested to in the opponent’s evidence suggesting that there had been no actual use in the 20 or so months since the opposed application was filed required some formal ‘rebuttal, denial or answer’ from the applicant. As already noted, however, it is now clear that the relevant date for assessing the applicant’s intention is the date of application. Moreover, Dodds-Streeton J stressed in Suyen at [207] that:

    There is long standing recognition that the absence of the requisite intention to use cannot be inferred from lack of use per se, particularly as there may be good reason to defer use until the protection of registration is secured.

    In Suyen at [212] to [214] her Honour provided some further examples of cases where lack of the requisite intention had been inferred, all of which again involve quite particular circumstances going beyond mere non‑use:

    Because the intention concerns the applicant’s state of mind, it is, as the authorities make clear, difficult for an opponent to discharge the onus it bears under s 59 of the Act. Opposition has nevertheless succeeded in a number of cases. The intention has been held to be contra-indicated where the applicant company was not operating and failed to provide evidence, had no capacity to trade in the relevant goods or services or was subject to a relevant contractual restraint: see Daimaru Pty Ltd v Kabushiki Kaisha Daimaru (1990) 19 IPR 129. In other cases, opposition has succeeded because the evidence established the existence of only illegitimate purposes, including the use of registration defensively, speculatively, to gain competitive advantage or to sell the trade mark: see also John Batt at 439-40.

    In Food Channel, the Full Court observed that ‘only a low threshold has been set with regard to intention to use’: at [67]. Their Honours referred to Michael Sharwood & Partners Pty Ltd v Fuddruckers Inc (1989) 15 IPR 188 (in which the applicant companies appeared not to carry on business, their location was illegal for a restaurant for which service the trade mark was to be registered and they adduced no evidence in answer to the opponent’s material) and to Danjaq LLC v Resource Capital Australia Pty Ltd [2004] ATMO 18; (2004) 61 IPR 651 (in which the applicant had made a large number of applications that were subsequently permitted to lapse, had a history of ‘cybersquatting’ and advanced the evidence of an unreliable sole witness. It was therefore inferred that the applicant was trading in registrations and had neither the capacity nor means to use the trade mark.).

    Opposition has also succeeded where the applicant advances no or no credible evidence of the intention or concedes its absence; or where documents or the circumstances indicate an intention which is, for example, not sufficiently definite, or not directed at use as a trade mark.

    In Health World, Jacobson J at first instance concluded that there was no intention to use the mark where the applicant’s principal witness did not make the final decisions on such matters, and did not distinguish between the applicant company and another company in relation to steps said to evidence an intention to use the mark. The person who did constitute ‘the controlling mind’ of the applicant company gave limited evidence which disclosed no positive intention to use the trade mark on goods of the relevant class. Rather, he testified that ‘we wanted to widen our business’ to use the mark on any goods or products the company might make.

    In Food Channel, the Full Court upheld the appeal on grounds, inter alia, that the primary judge erred in finding that the applicant had no intention to use the trade mark where its sole director (and ‘controlling mind’) gave unchallenged (and not inherently improbable) evidence of intention to use the mark, and there was ‘some evidence not found to be unreliable’ that the assignor company (controlled by the same person) had used the mark in respect of the relevant class of goods: at [82]. The Full Court concluded that ‘in this state of the evidence, the judge could not reasonably conclude that [the opponent] had discharged its onus on the s 59 issue’: at [83].

    Suyen itself concerned opposition based on s 59 to a trade mark with a 2003 priority date. The opponent in that case submitted that, in addition to there having been no significant use prior to the opposition proceedings commencing, two further circumstances shifted the evidentiary onus to the applicant. Firstly, the applicant had apparently only made scant reference to Australia in a notice of opposition it had filed in the USA in 2006 in which it had purported to set out its sales, marketing, advertising and other activities and other activities under a closely related trade mark. Secondly, as at three specific dates in 2008, being dates when the opponent’s attorneys had checked the applicant’s website, the ‘website did not evidence any intention to use [the trade mark] in Australia’ and, inter alia, did not appear to ‘target, and was not accessed by, Australian-based purchasers’. Dodds-Streeton J however considered that these matters were not sufficient to shift the opponent’s evidentiary onus … [8]

    [8] [2012] ATMO 29, [36]-[39].

17. The Opponent asserts, and the Applicant does not rebut, that the application to register the Trade Mark was for speculative purposes, given the common usage of the term in the adult entertainment industry.   The Opponent has supported its contention with evidence of the Applicant’s lack of use of the Trade Mark, both before and after the Priority Date.

18. The Applicant, who is legally represented in this proceeding, has clearly been put on notice that a lack of intention to use is an issue in these proceedings. The SGP specified s 59 as a ground of opposition. The s59 ground was also raised in the EIS and Opponent’s Submissions, both of which the Applicant had access to. The Applicant chose not to file evidence or submissions in this matter and so it is open to me to draw certain inferences there from having regard to the evidence as a whole.

19. While the Opponent’s evidence of the Applicant is limited, on balance I consider that this evidence establishes a prima facie case that on the relevant date the Applicant lacked the requisite intention to use the Trade Mark. In circumstances where it would have been a relatively simple task for the Applicant to provide evidence about himself and his intentions I am reluctant to impose a heavy evidential burden on the Opponent. It was therefore incumbent on the Applicant to provide evidence on an intention to use the Trade Mark, a relatively simple task. This he has not done. I accordingly find the opposition ground based on s 59 of the Act established.

    Decision

20. I have found the Opponent has established the ground of opposition it raised pursuant to s 59 of the Act. As the Delegate of the Registrar I accordingly refuse to register the Trade Mark.

    Costs

21. The Opponent 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 Applicant under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.

    Nicholas Smith
    Hearing Officer
    Oppositions and Hearings
    7 February 2018