Trent Lecky v Mate Communicate Pty Ltd

[2022] ATMO 163

TRADE MARKS ACT 1995

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

Re:Opposition by Trent Lecky to an application under section 92 of the Trade Marks Act 1995 (Cth) by MATE Communicate Pty Ltd for removal of trade mark number 1165398 (25) – mate – in the name of Trent Lecky

Delegate:

Nicholas Smith

Representation:

Opponent: Self-represented

Applicant: Epiphany Law

Decision:

2022 ATMO 163

Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) application for removal - Removal Opponent’s evidence shows no use of the Trade Mark during the relevant period for a subset of goods – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register for some of the goods for which it is registered

Background

1. This decision is pursuant to an application made on 13 September 2019 under s 92(4)(b) of the Trade Marks Act 1995 (‘Act’) by MATE Communicate Pty Ltd (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of all the goods for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.

1165398

Lodgement date

14 May 2007

Goods

Class 25: Armbands (clothing); articles of clothing made from wool; articles of waterproof clothing; articles of water-resistant clothing; articles of weatherproof clothing; articles of windproof clothing; athletic clothing; beach clothing; belts (clothing); boys' clothing; casual clothing; children's clothing; clothing; clothing for babies; clothing for sports; clothing, not being protective clothing, incorporating reflective or fluorescent elements or material; collars (clothing); combinations (clothing); denims (clothing); girl's clothing; headbands (clothing); hoods (clothing); infants' clothing; jackets (clothing); jerseys (clothing); knitted clothing; knitwear (clothing); ladies clothing; leather belts (clothing); men's clothing; motorcyclists' clothing (other than for protection against accident or injury); ready-made clothing; ready-to-wear clothing; thongs (clothing); women's clothing; woollen clothing; wristbands (clothing); wristlets (clothing); clothing, footwear, headgear

(‘Registered Goods’)

Owner

Trent Lecky

Trade Mark

mate

(‘Trade Mark’)

2.  Trent Lecky (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal and a Statement of Grounds and Particulars (‘SGP’) on 17 January 2020.  The Applicant filed a Notice of Intention to Defend on 7 May 2020.

1. The Opponent subsequently filed evidence in support of its opposition to removal (‘EIS’).  The Applicant filed evidence in answer (‘EIA’) and the Opponent filed evidence in reply (‘EIR’).  This material will be discussed in more detail below.

   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.  On 29 January 2021 the Applicant requested a hearing by submissions and paid the appropriate fee.  Following delays caused by various applications to extend the deadline to file the EIR, the matter was set down for a hearing.  I was allocated to decide the matter as a delegate of the Registrar of Trade Marks.  In line with usual practice, a letter was sent to the parties 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 21 June 2022 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 8 July 2022 (‘Applicant’s Submissions’). 

   5.  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 and the evidence listed below:

   ·The Application for Removal;

   ·The Notice of Intention to Oppose and SGP;

   ·The Opponent’s Submissions; and

   ·The Applicant’s Submissions.

   Evidence in Support

   • Declaration by Trent Lecky, the Opponent, dated 24 July 2020 (‘Lecky 1’) together with Exhibits A to J and documents described as Testimonial 1 and 2.

   Evidence in Answer

   • Declaration by David Kwei, IP Counsel at Epiphany Law, legal representative for the Applicant, dated 2 November 2020 (‘Kwei declaration’) together with Exhibits DK-1 to DK-16.
   • Declaration by Liam Widdowson, Solicitor at Brixton Legal, a law firm that provides services to the Applicant, dated 2 November 2020 (‘Widdowson declaration’) together with Exhibits LW-1 to LW-4.

   Evidence in Reply

   • Declaration by Trent Lecky, dated 4 January 2021 (‘Lecky 2’) together with Exhibits A to F
   • Declaration by Trent Lecky, dated 8 November 2021 (‘Lecky 3’) together with an additional document titled ‘Licensing Agreement’.

   The Relevant Provisions

   6. 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 of the Act 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)  …

   (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.

   7. 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 13 August 2019 (‘relevant period’).

   8. 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,[1] and I confirm that five years since filing the application have in fact passed.

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

   9. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 of the Act 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) …
   (b)  …
   (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.

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

   [2] 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 of the Act.

   11.     In accordance with s 101 I may decide to remove the Trade Mark from the Register for all or some of the goods identified in the application 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 application for removal was made are established.

   12. 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),[3] 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’.[4] 

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

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

   Discussion

2. To successfully oppose the application the Opponent must establish that it has used the Trade Mark (or a substantially identical trade mark[5]) pursuant to s 100 of the Act, or that there were circumstances that were an obstacle to use in the relevant period (per s 100(3)(c)). Use of the Trade Mark by another person who was authorised by the Opponent is taken to be use of the Trade Mark by the Opponent.[6]  

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

   [6] Section 7(3) of the Act.

3. 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

4. The Opponent’s evidence in this matter consists of three declarations by the Opponent.  Lecky 1 states that the Opponent has been selling a variety of apparel under the Trade Mark since it was registered in 2007.  In support of this assertion the Opponent has provided evidence of its website and articles about the Opponent showing use of the Trade Mark for sports apparel and hats in the relevant period.  Lecky 1 also contains two testimonials from third parties connected to the Opponent stating that they have worked closely with the Opponent over the last 14 years either in the production of garments or design of apparel.  Lecky 2 asserts that the Opponent has maintained websites advertising apparel for sale under the Trade Mark at and Lecky 2 also states that the opponent has continued to sell apparel under the Trade Mark to traditional retail outlets for the last 10 years.  Finally in Lecky 2 and 3 the Opponent gives evidence that he is the sole director and secretary and majority shareholder of the company Mate Industries Pty Ltd which he has licensed to use the Trade Mark.  

5. In response the EIA contains evidence suggesting that the website was inactive during the relevant period and the websites at and (‘Opponent’s websites’) were inactive from 1 November 2018 and prior to that resolved to the same page that had not been updated for several years.   The EIA also contains evidence of media interviews conducted by the Opponent prior to the relevant period, which are the basis of submissions made by the Applicant as to the Opponent’s credit and suggestions that he registered the Trade Mark in bad faith.  With respect to the Applicant, I am not persuaded that interviews conducted by the Opponent several years before the relevant period are of any relevance to the question of use of the Trade Mark in the relevant period and I do not need to summarise the content of this material in this decision.   

6. When evaluating the evidence I face the following conundrum.  The Opponent (or an entity that he was the sole director, company secretary and majority shareholder in) has clearly designed apparel that displays the Trade Mark.  I am satisfied from the evidence from the Wayback Machine that the Opponent also maintained, at least until 2018, the Opponent’s websites in which it advertised a limited range of hats, t-shirts and singlets for sale under the Trade Mark.  At the same time the Opponent has provided no documentary evidence (such as receipts, trading figures, financial documentation or customer testimonials), that it has ever sold a single product under the Trade Mark, nor any evidence of advertising other than the Opponent’s websites.  Furthermore, it has provided no evidence that it has ever manufactured (or had manufactured for it) a piece of apparel bearing the Trade Mark other than those displayed on the Opponent’s websites.

7. Notwithstanding the lack of evidence of sales under the Trade Mark, on the balance of probabilities, I am satisfied that during the relevant period the Opponent did maintain the Opponent’s websites that advertised hats, t-shirts and singlets for sale under the Trade Mark.  Proof of actual sales are not required to show use of a Trade Mark, only that the Opponent is using the Trade Mark to distinguish the goods offered under the Trade Mark from the goods of other suppliers.  This was occurring on the Opponent’s websites during the relevant period.

8. The Applicant has submitted that the use of the Trade Mark on the Opponent’s websites was not use by the Opponent (the registered owner) or an authorised user.  While I note the gaps in the Opponent’s evidence as to the ownership of the Opponent’s websites, I am satisfied on the balance of probabilities (based on the various explicit statements in the EIS and EIR as to the websites being operated by the Opponent), that the websites are either owned by the Opponent or by Mate Industries Pty Ltd, which as an entity in which the Opponent is the only officeholder and owns the majority of the shares (the remaining shareholders being family members). The company essentially operates as an alter ego of the Opponent, with the Opponent directing and controlling all its operations and hence there is a unity of purpose between the Opponent and Mate Industries Pty Ltd.  As such the use of the Trade Mark on the Opponent’s websites is use of the Trade Mark by the Opponent, either directly or through Mate Industries Pty Ltd as an authorised user of the Trade Mark.

9. With respect to whether the use of the Trade Mark for hats, t-shirts and singlets falls within the specification of the Registered Goods, I consider that the breadth of the specification for the Registered Goods is far broader than the proven use by the Opponent in this case, which is limited to hats, t-shirts and singlets.  In Trident Seafoods Corporation v Trident Foods Pty Limited Gleeson J stated, ‘if a description of the goods in the registration is broader that the proven use, the Registrar or the Court can redraft the registration and replace the broad description with a narrower description more closely aligned with the use proven: Hills Industries Ltd v Bitek Pty Ltd [2011] FCA 94 [291] – [306]’.[7]  The goods offered by the Opponent under the Trade Mark in the relevant period are best characterised as ‘hats, t-shirts and singlets’.  Accordingly I am satisfied that the Opponent has used the Trade Mark in Australia in respect of hats, t-shirts and singlets (‘Used Goods’) in the relevant period.  I am not satisfied that the Opponent has used the Trade Mark for the Registered Goods other than the Used Goods (‘Remaining Goods’) during the relevant period.  

   [7] [2018] FCA 1490, [116].

   Obstacles to use

   21. 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 Remaining Goods in the relevant period, pursuant to s 100(3)(c) of the Act and in the interests of completeness I note that I have been unable to identify any such obstacles. The Opponent does refer to issues caused by the Covid-19 pandemic but as this occurred after the relevant period it is not relevant to my consideration of this issue. 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 Remaining Goods.

   Registrar’s Discretion

   22.   As noted in Shanahan’s Australian Law of Trade Marks and Passing Off the policy of the Act is to facilitate the removal of an unused trade mark, and the public interest in the integrity of the Register will generally demand the removal of an unused trade mark.[8] However, as indicated at paragraph 11, above, s 101(3) provides the Registrar with a discretion, which, in the words of Bennett J, is:

   [8] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2016 Thomson Reuters, [70.2505].

   a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court [or Registrar] is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.[9]

   [9] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [167].

   Her Honour also noted:

   By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. …

   There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account.[10]

   [10] Ibid [171]-[172].

10. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated:

    Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[11] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register.[12] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[13]

    [11] Kowa Co Ltd v Organon [2005] FCA 1282, [92].

    [12] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

    [13] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210].

    24.   Factors that have been found relevant to the consideration of whether to exercise the discretion include:

    ·There had been no abandonment of the trade mark;

    ·The registered proprietor of the mark still had a residual reputation in the mark;

    ·There had been sales by the registered proprietor of goods for which removal was sought since the relevant period ended;

    ·The applicant for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark;

    ·The registered proprietor was not aware of the applicant’s sales under the mark.[14]

    [14] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135 at [169] citing E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 1005 [202]-[203] (Bennett J).

    25.   In the present case I am not satisfied that there is any significant reputation in the Trade Mark for the Remaining Goods, given the almost non-existent evidence of sales and marketing of goods under the Trade Mark since it was registered.  Given that, I am unpersuaded that the removal of the Trade Mark for the Remaining Goods would result in consumer confusion or practically impact on the interests of the Opponent in any way.  Given the importance of the integrity of the Registrar I do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of any of the Remaining Goods.

    Decision

    26.     The Opponent has partially established its opposition to removal. I direct that registration 1165398 be removed from the Register in respect of all Remaining Goods one month from the date of the Decision. It will remain registered for the goods listed below.  If the Registrar is served with a notice of appeal before then I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.

    Class 25:  hats, t-shirts and singlets

    Costs

    27.     Neither party has been entirely successful in respect of the application for removal of Trade Mark 1165398.  As such I make no order as to costs.

    Nicholas Smith

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    20 September 2022