Virgin Enterprises Ltd v Agripower Australia Ltd - [2013] ATMO 79

TRADE MARKS ACT 1995

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

Re:Opposition by Virgin Enterprises Limited to registration of trade mark application 1332725(1,36,42) - VIRGIN GREEN - filed in the name of Agripower Australia Limited.

Delegate:

Nicole Worth

Representation:

Opponent: Andrew Fox of Counsel, instructed by Addisons Lawyers

Applicant: James Maxwell of Peter Maxwell & Associates

Decision:

2013 ATMO 79

Section 52 opposition – s60, 43, 58 and 59 grounds – s60 partially established - Applicant given opportunity to delete relevant services –– no award of costs

Background

This is an opposition brought by Virgin Enterprises Limited (‘the Opponent’) pursuant to section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of trade mark application number 1332725 in the name of Agripower Australia Limited (‘the Applicant’).
Relevant details of the opposed application are as follows:

Trade Mark: VIRGIN GREEN (‘the Trade Mark’)

Priority date: 23 November 2009

Owner: Agripower Australia Limited

Goods & Services: Class 1: Diatomaceous earth and preparations containing, based on or made from diatomaceous earth in this class; fertilizers, fertilizer additives and fertilizing preparations; chemicals and chemical substances used in industry, science, agriculture, horticulture and forestry; absorbents in this class; desiccants in this class; preparations to aid water retention and to improve soil and soil salinity; phosphates; preparations containing diatomaceous earth to control moisture; cement bonding agents; preparations for filtration purposes; chemicals and preparations for filtering water, beverages, food and pharmaceuticals; diatomaceous earth and preparations containing, based on or made from diatomaceous earth for carbon sequestration, storage and capture, and to aid carbon sequestration, storage and capture.
Class 36: Carbon trading services; carbon brokerage services; trading of emission reduction credits; services related to trading of carbon credits and emission reduction units; investment and financial services in relation to investment schemes for the trading of carbon credits and emission reduction units; carbon offsetting services; management of carbon dioxide, greenhouse gas abatement and emission reduction offsets, allowances and units; carbon credit schemes; information, advisory and consultancy services relating to all of the aforementioned services.
Class 42: Advisory and consultancy services in the field of carbon offset and sequestration; technical and scientific services in relation to carbon offsetting, carbon trading and carbon sequestration; scientific, industrial and technological research in relation to carbon offsetting and carbon sequestration; carbon offsetting services.

The application was examined and accepted for possible registration. Acceptance of the application was advertised in the Australian Official Journal of Trade Marks on 25 March 2010. On 23 June 2010 the Opponent filed a Notice of Opposition to the registration nominating most of the grounds available under the Act to oppose a registration.
The parties served and filed evidence (described below) after which the matter came for hearing before me, as a delegate of the Registrar of Trade Marks, on 20 June 2013. The Opponent was represented by Andrew Fox of Counsel, instructed by Karen Hayne of Addisons Lawyers. The Applicant was represented by James Maxwell of Peter Maxwell & Associates.

Evidence including decision in respect of further evidence

The evidence served and filed in these proceedings is as follows:
Evidence in support
·Statutory declaration of Karen Anne Hayne, lawyer with Addisons Lawyers, with exhibits KAH-1 to KAH-186 dated 15 December 2011 (‘Hayne 1’)
·Statutory declaration of Karen Anne Hayne with exhibits KAH-A to KAH-III dated 21 December 2011 (‘Hayne 2’)
·Statutory declaration of Mark James, Intellectual Property Manager of the Opponent, with exhibits MJ-1 to MJ-4 dated 29 September 2011
·Statutory declaration of Michael Odai, General Counsel and Chief Operating Officer of Virgin Green Fund (“a member of Sir Richard Branson’s Virgin Group of Companies”), with exhibits MO-1 to MO-9 dated 12 December 2011
Evidence in answer
·Declaration of Peter Prentice, director of the Applicant, with exhibits 1 to 3 dated 31 August 2012 (‘Prentice 1’)
Evidence in reply
·Statutory declaration of Karen Anne Hayne with unserved and unfiled confidential exhibit KAH-A and exhibits KAH-B to KAH-E (‘Hayne 3’), undated, filed 6 December 2012.
Further evidence of Applicant
·Declaration of Peter Prentice with exhibit 1 dated 28 May 2013 (‘Prentice 2’)
At the hearing the Opponent clarified that it would not be reading certain parts of its evidence, those parts being paragraphs 98 and 99 of Hayne 2 and paragraphs 3, 4 and 5 of Hayne 3. This material relates to an exhibit (confidential exhibit KAH-A), the confidentiality of which was in dispute and so it had not been served or filed, although the Opponent indicated that it may do so at the hearing pending the Applicant’s submissions. At the hearing the Opponent confirmed it would not seek to serve or file confidential exhibit KAH-A.
On this basis the parties agreed that certain parts of the Applicant’s further evidence need not be read, those parts being paragraphs 6 to 11 and 13 to 14 of Prentice 2 (which is a 16 paragraph declaration accompanied by a single exhibit). The Opponent further indicated that it did not object to paragraph 12 of Prentice 2, which constitutes a correction to Prentice 1, and to give paragraph 12 context the Opponent did not object to paragraphs 1 to 5 either (save for the last sentence of paragraph 1). The material that the Opponent did object to in Prentice 2 comprises the final sentence of paragraph 1 and paragraphs 15 and 16.
The final sentence of paragraph 1 makes an assertion about the knowledge Mr. Prentice has gained by virtue of his position as director of the Applicant, specifically “As a result of my responsibilities and position with my Company, I have become very familiar with the products and services which my Company markets in Australia, the labels and trade marks which those products and services bear and the history and extent of my Company’s business activities in Australia”. The basis of the Opponent’s objection is not clear to me. However given this statement is also made in Prentice 1, and appears a reasonable assertion given Mr. Prentice is the director of the Applicant, I consider it reasonable to allow its inclusion.
Paragraphs 15 and 16 of Prentice 2 relate to the ground of opposition under section 59 and the asserted lack of intention on the Applicant’s behalf to provide the specified services. Mr. Prentice makes statements about the association of the some of the class 36 and 42 services with some of the class 1 goods, in essence that the provision of carbon credit and carbon trading services would be a natural expansion of a business involved in diatomaceous earth because diatomaceous earth sequesters carbon. In support of his statements he exhibits a letter addressed to him (as “Managing Director, Agripower Australia Limited”) dated 6 November 2009 from Baker and McKenzie Solicitors, whom the Applicant had retained to advise upon potential carbon market opportunities. Mr. Prentice declares that detailed written advice was prepared however it is confidential, so all of the material in the letter is redacted save the salutation “Dear Peter” and the heading “Diatomaceous Earth – Voluntary Carbon Market Opportunities”.
The Opponent objects to this material on the basis that it does not assist in the determination of the opposition. It submits that there is no utility in the evidence and even if there was, it comprises fresh evidence that ought to have been adduced previously and therefore should not be allowed into proceedings. The Applicant presses for its inclusion, submitting that it was discovered late in proceedings because it was only sought in response to the Opponent’s submission that it might serve and file confidential exhibit KAH-A at the hearing.
The principles for deciding whether it is appropriate to allow further evidence to be adduced were set out in Oxon Italia SpA’s Application[1]. They are that the evidence could not have been obtained with reasonable diligence at an earlier stage, that the evidence would probably have an important influence on the result, and that the evidence is credible. A further observation was made by the Registrar’s delegate in Studio SrL v Buying Systems (Aust) Pty Ltd[2] that where credible further evidence could be adduced which would enable the Registrar to finally determine the matter, that further evidence should be admitted into proceedings rather than the parties relying on an appeal to the courts.
[1] [1981] FSR 408 at 409 (Ch D).
[2] [1992] AIPC 90-858.
Bearing the principles in mind, I consider it reasonable to allow the further evidence. The letter is dated before the priority date, and whilst the information within it has been redacted it does lend support to the Applicant’s claim that it received advice regarding opportunities in the voluntary carbon market[3] prior to filing its trade mark application. Should there be any shift in onus to the Applicant in respect of section 59, I consider this material would likely be influential in establishing the requisite intention in respect of at least some of the services specified. I accept that the Applicant could, and possibly should, have adduced the evidence earlier in proceedings. At the same time I consider it a plausible explanation that the Applicant did not foresee its intention would be seriously challenged until late in proceedings, when the Opponent indicated it might adduce unserved confidential exhibit KAH-A in spite of the dispute over its confidentiality, and so the Applicant made further effort to find evidence that would rebut the assertion under section 59. For these reasons I will allow the further evidence comprising paragraphs 1 to 5 and 15 to 16 of Prentice 2 and exhibit 1 which is referred to therein.
[3] A Wikipedia® entry in relation to “Carbon offset” describes carbon markets as “There are two markets for carbon offsets. In the large, compliance market, companies, governments, or other entities buy carbon offsets in order to comply with caps on the total amount of carbon dioxide they are allowed to emit…In the much smaller, voluntary market, individuals, companies, or governments purchase carbon offsets to mitigate their own greenhouse gas emissions…” < accessed 9 September 2013.
It now being clear which evidence is to be included in proceedings, I will give a brief history of the parties as presented by their evidence.
The Opponent’s evidence is voluminous, comprising 25 volumes containing more than seven thousand pages of exhibits. A substantial portion of this is contained within Hayne 1, which the Opponent submits is led solely for the purpose of establishing the reputation of its trade marks across a broad range of businesses and that resort to that declaration will only be necessary where reputation is challenged. Therefore much of what the Opponent has presented will be significantly abridged in these reasons.
The Opponent is a UK company which is the owner of all the trade mark applications and registrations for the Virgin group of companies (‘the Virgin Group’) of which the entrepreneur Sir Richard Branson is the Chairman. There are approximately 3000 of these applications and registrations in more than 150 countries, including Australia. The Opponent first registered the word VIRGIN in Australia in 1974 in class 9, and first registered the word VIRGIN in fancy script (depicted below) in 1986, also in class 9. I will refer to the word and fancy script marks collectively as the Opponent’s trade marks.
Sir Richard Branson first used the name Virgin in the UK in 1970 in respect of the sale of recorded music by mail order. Since that time, a range of businesses have been conducted under that name either under the control of, or as licensee of, the Virgin Group in areas as disparate as airlines and beverages or computer games and finance, and turnover has been in the order of billions of pounds since the late 1990s. Not all of the businesses are conducted in all of the countries in which the Virgin Group is present, and some which were conducted in the past are no longer in operation. These are discussed in more detail under the specific grounds of opposition.
Sir Richard Branson and/or the Virgin Group have undertaken a number of environmental initiatives from 2006, some of which utilise the Virgin name. These initiatives include ‘The Global Green Campaign’ aimed at reducing fuel emissions (from which Virgin Green Fund, described below, derived), ‘Virgin Unite’ focused upon the social and environmental impact of businesses, ‘The Carbon War Room’ focused upon an entrepreneurial solution to climate change, and ‘The Virgin Earth Challenge’ (now closed) offering a $25 million prize to whomever can demonstrate a commercially viable design to remove greenhouse gasses from the atmosphere.
One of the businesses within the Virgin Group is Virgin Green Fund (‘VGF’). It is a private equity firm that was launched in the UK in 2007 after Sir Richard Branson pledged to invest $3 billion into alternative energy projects. Its initial incarnation was as Virgin Fuels in 2006 which then became VGF in 2007. Mr. Odai describes the business as:
...VGF invests in businesses seeking to raise capital and whose products and services reduce net greenhouse gas emissions, or improve the management of scarce resources, operate in environmentally and economically sustainable markets, and have a long-term positive impact on their communities and society more broadly.
VGF also invests in renewable energy such as hydro, solar, wind, bio fuel, bio mass, fuel cells and geothermal energy. VGF has been working on plans to develop resource efficiency in fields such as aviation, emissions reduction, energy efficiency, energy storage, monitoring systems, waste management and water management.
VGF does not currently have any Australian companies in its investment portfolio, however Mr. Odai declares that its partner company is Metrolight Limited (‘Metrolight’) and Metrolight has partnered with various Australian companies that have an environmental focus. Web pages and media articles about the Metrolight and the Australian companies are exhibited which reference Sir Richard Branson or VGF.
The Applicant is involved in the mining and production of diatomaceous earth (‘DE’). DE is a porous substance composed predominantly of silica, formed by the accumulation of the fossilised remains of diatoms (microscopic organisms). To date DE has not been used extensively in agriculture because it usually contains a carcinogen named cristobalite. The Applicant claims that its DE contains no cristobalite, and that consequently it can be used for a range of agricultural purposes including as a fertiliser, to remediate soil, to help water retention, to assist in animal health and to sequester carbon.
Carbon sequestration is the capture and long-term storage of carbon. Plants can sequester carbon by capturing and storing it in silicified plant cell structures called phytoliths. The Applicant claims that by applying its DE as a fetiliser, the production of phytoliths in certain plants and crops can be increased dramatically. When this occurs over many of acres of crop land and is repeated each year, significant amounts of carbon are sequestered and can therefore lead to a significant bank of carbon credits[4].
[4] A carbon credit is a tradeable instrument representing the right to emit one tonne of carbon dioxide. Activities and projects which reduce greenhouse gases generate carbon credits that their owner can sell to other entities wishing to offset the amount of carbon dioxide they emit into the atmosphere.
This information regarding DE and carbon sequestration is contained within a booklet produced by the Applicant entitled AgriPower. Climate Friendly Farming: Silicon (Si) Organic Fertilisers & Carbon Sequestration, a copy of which is attached to Prentice 1. The Applicant declares that when the Opponent filed the notice of opposition, it put its plans to use the Trade Mark on hold and since then has conducted its activities in the name of the parent company Agripower Australia Ltd and will continue to do so until the opposition is resolved.
The reasons why the Applicant chose the words VIRGIN GREEN are declared in Prentice 1 to be a) that it was originally looking to use the word GREEN because of its association with agriculture and because of its environmentally friendly connotation, and b) that it was looking to use a word to reflect the purity of its DE and that its DE is certified as organic, so when a staff member suggested VIRGIN the Applicant settled upon the combination VIRGIN GREEN.
The Applicant subsequently filed the subject application, and nominated within it goods in class 1 and services in classes 36 and 42. In respect of the services Mr. Prentice declares “It is the ambition of my Company to be involved in carbon trading in the future as DE is capable of carbon sequestration and locking carbon up within the plant or crop. My company can use its pure DE and green technology to sequest[er] the carbon and therefore, have the ability to trade in carbon credits and the like in the future”. [5]
[5] Paragraph 12 of Prentice 1.
In addition to filing the trade mark application the Applicant has registered a number of companies including Virgin Green Pty Ltd, Virgin Green Health Pty Ltd, Virgin Green Technology Pty Ltd and Virgin Green Marketing Pty Ltd. It also claims to have developed a logo wherein the words VIRGIN GREEN are presented in a fancy font and the letters V and G are much larger than the others. The logo also contains a device which in the copy before me is unclear such that it appears to be only a black blob. Nothing, however, hangs upon the logo as it is the words in plain text that have been applied for. The Applicant also points to other trade marks registered in Australia that incorporate the word VIRGIN and are unassociated with the Opponent.
Lastly the Applicant declares it only became aware of the Opponent’s ‘Virgin Green Fund’ during settlement negotiations with the Opponent and that it has no intention of being associated with Opponent.

Grounds and onus

The notice of opposition lists most of the grounds contained in the Act for opposing registration, however in its submissions the Opponent only presses the grounds pursuant to sections 60, 43, 58 and 59. For completeness of my decision I find that none of the other grounds listed in the notice of opposition have been established.
It is the Opponent that bears the onus of establishing a ground of opposition according to the ordinary civil standard of the balance of probabilities[6], and the relevant date at which the rights of the parties are to be determined is the priority date of the application.[7] The Opponent begins its discussion with the ground under section 60, and it is convenient that I do so as well.
[6] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27] and Fry Consulting Pty Ltd v Sports Warehouse Inc (2012) 94 IPR 551 per Dodds-Streeton J at [13].
[7] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, per Kitto J at 595.

Section 60

Section 60 of the Act provides:
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a)another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b)because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.
Note: For priority date see section 12

The relevant test to determine whether reputation is established was set out in McCormick & Co Inc v McCormick[8]:
Does the evidence establish that in Australia before [23 November 2009, the priority date] the [Opponent’s] marks were recognised by the public generally and because of that, the use by [the Applicant] of its marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing [the Applicant’s] product to [the Opponent]?
[8] [2000] FCA 1335; (2000) 51 IPR 102, at [81] – [82].
The trade marks that the Opponent relies upon in establishing its case are “all those for which it has obtained registration in Australia, or for which registration has been applied at the Application Date”, which are exhibited in the Opponent’s evidence in a table spanning 77 pages. I do not intend to discuss each trade mark within that table, however I note that in general they all contain or comprise the earlier-defined Opponent’s trade marks (being the word VIRGIN or the word in fancy script). To that end I will focus my comments upon them and only address variants of them where necessary.
I consider that the reputation of the word VIRGIN in fancy script is undeniable and does not require a great deal of discussion. It has been used extensively all over the world as a trade mark in relation to many industries including publication of music, retail services, an airline and associated travel services, telecommunications, and a host of other businesses. It is unlikely that the appearance of the word VIRGIN in fancy script in respect of almost any good or service would not be taken to indicate a connection to the Opponent or the Virgin Group. It is also precisely because the word in that particular form is so well known that as association with the Opponent might not be made where it appears in other forms. As stated by the delegate in Flight Centre Pty Ltd v World Flight Centre Pty Ltd[9] “Reputation in a trade mark can thus be a double-edged sword and may either reinforce or mitigate the effect of differences”.
[9] [2003] ATMO 60, at paragraph 21.
I do not consider the same can be said in respect of the word in plain text. It must be acknowledged that VIRGIN is an ordinary word in the English language, the meaning of which is applicable to many goods or services. Nonetheless I consider that the claimed reputation in the plain word VIRGIN may be considered common knowledge in respect of an airline (and the Applicant concedes the trade mark’s reputation in this context) and for mobile telephone communications, such that lengthy discussion of the evidence is unwarranted.
The other services in respect of which the Opponent has established (as at the priority date) a reputation in its plain text trade mark I consider to be credit card and related financial services, music publishing and retailing of CDs and DVDs.
Virgin Money (Australia) Pty Ltd (‘Virgin Money’) was incorporated in 2003 and it launched the Virgin credit card later that year. Australian media reported that by June 2004 350,000 Virgin credit cards had been issued, and a number of television advertisements and marketing materials were distributed in respect of them. Virgin Money also expanded into a range of other financial services including superannuation, car insurance, savings and home loans. The evidence does not indicate the extent to which these other financial services were taken up by the Australian public, however it is reasonable to infer that VIRGIN is recognised in the broader financial market as a trade mark of the Opponent on the basis of its credit card business.
In respect of music publishing and retailing of CDs and DVDs, businesses within the Virgin Group that have used the VIRGIN trade mark include Virgin Records (a record label launched in 1973 which publishes the music of multiple famous musicians and bands) and Virgin Megastores (the first of which opened in Australia in 1988 and multiple stores operated until 2010 selling music CDs and a broad range of DVDs). Whilst the Virgin Megastores no longer operate in Australia, they were in operation at the priority date and considerable awareness of them remains due to the length of time they were in operation and the recency of their closure.
However I am not satisfied that the plain text trade mark, VIRGIN, had a reputation as at the priority date and in Australia, in respect of the many other businesses addressed in its evidence. Many of them are/were based in the UK or countries other than Australia, or were short lived attempts to launch a new line of goods or services, or temporary promotions. Examples include the Virgin Drinks and Virgin Cola businesses, the Virgin Bride and Virgin Ware (a clothing label) businesses, condoms distributed under the name ‘Mates Condoms’, Virgin Cosmetics and Virgin Radio. I note that Virgin Books continue to be distributed in Australia. I consider the promotional expenditure and sales figures in evidence indicate the popularity of the published books and do not establish the reputation or recognition amongst the public of the book publisher.
The various environmental initiatives undertaken by Sir Richard Branson or the Virgin Group have received some measure of publicity in Australia. A number of media articles are in evidence which refer to Sir Richard Branson and his aim to develop more environmentally friendly fuel, particularly in respect of his airline. It reasonable to suppose, on this basis, that the Australian public would recognize that the Virgin Group is attempting to become more environmentally sustainable and is encouraging others to do so. However this does not extend to finding the Opponent’s trade marks have a reputation in respect of environmental services.
Neither am I satisfied that VGF had a reputation in Australia at the priority date. It is based overseas and aimed at a narrow market, being businesses that have an environmental focus which are seeking capital investment. The VGF website is not directed at the Australian market, although I note that Australia may be chosen as a region from which an entity wishing to submit a proposal originates. There are some press articles in evidence, however the majority of Australian articles do not mention Virgin Green Fund but rather Virgin Fuels.
In respect of reputation overseas the Opponent points to Winnebago Industries v Knott Investments Pty Ltd (No 2)[10] and Conagra Inc. v McCain Foods (Aust) Pty Ltd[11], in particular the test in Conagra quoted by Foster J in Winnebago wherein a business presence in Australia was not required to establish reputation:
The requirement in some of the cases that a very slight form of business activity is sufficient is really a somewhat artificial concept. The real question is whether the owner of the goods has established a sufficient reputation with respect to his goods within the particular country in order to acquire a sufficient level of consumer knowledge of the product and attraction for it to provide custom which, if lost, would be likely to result in damage to him.
[10] [2012] FCA 785; (2012) 293 ALR 108
[11] [1992] FCA 159; (1992) 33 FCR 302
I acknowledge that the Opponent need not necessarily demonstrate actual trade or an offer to trade in Australia in order to establish a reputation for its trade mark here. Nevertheless I distinguish the matter before me from the cited cases for two reasons. Firstly, the primary meaning of VIRGIN in the English language is ‘pure’ or ‘untainted’ and it is not eclipsed by the reputation of the Opponent’s mark where it can be applied sensibly. Secondly, the cited cases compared goods much closer in nature than I perceive to be the case here. When viewed in its totality the Opponent’s evidence appears to assert, at least in part, that by virtue of the Opponent’s reputation for diversification rather than specific businesses (which I note takes place to a much greater degree overseas) use of the plain word VIRGIN for quite disparate goods or services may cause deception or confusion. I consider this requires a much greater degree of inference that I am prepared to draw, particularly given that reputation must be established as fact and cannot be assumed.[12]
[12] Conagra, supra.
Having established a reputation in its trade marks, albeit not to the extent asserted, the Opponent must now satisfy me that because of that reputation, use of the Trade Mark would be likely to deceive or cause confusion.
In respect of the services in class 36 I am satisfied that deception or confusion in the Australian market is likely. It is not uncommon for carbon trading to be facilitated and participated in by banks and other financial institutions. It also appears that the class 36 services specified by the Applicant would require significant resources, whether they be investment type services or the management of a carbon trading scheme. The Opponent’s trade marks have a reputation in respect of credit card and related financial services, and the Opponent has a wealth of resources available to it. In addition, the ordinary meaning of the word VIRGIN is not one that would normally be applied to these services (whereas GREEN is somewhat descriptive owing to its ‘environmentally friendly’ connotation). For these reasons I consider it likely the Australian public would be caused to wonder whether the Opponent had extended its services into carbon trading and associated services, using the word GREEN to indicate the environmentally friendly nature of them. I mention also an additional factor, which is that purchasers of the Opponent’s airline tickets are given the opportunity to pay a small fee to offset the carbon emissions produced by their trip. This is common amongst airlines and on its own establishes little in respect of the class 36 services. However in combination with the other factors outlined above it provides further support for the potential association of such services with the Opponent’s trade marks in the mind of the Australian public.
In respect of the goods specified in class 1 I am not satisfied that there will be any significant number of purchasers likely to wonder whether the Applicant’s products originate from the Opponent. Firstly, the word VIRGIN is used in a sense that could equally be taken to mean ‘pure’ or ‘untainted’, whether as a description of the goods themselves or of the result of their use. Secondly, the goods in class 1 are very far removed from any goods or services for which the Opponent has established a reputation such that an association is unlikely. In addition, as mentioned previously I do not consider the Opponent’s reputation for diversification is as broad in Australia as it is elsewhere, certainly not to the extent that the public might wonder whether the Opponent had diversified its business to the specialised goods in class 1.
The same rationale applies to some of the services specified in class 42, specifically “technical and scientific services in relation to carbon offsetting, carbon trading and carbon sequestration; scientific, industrial and technological research in relation to carbon offsetting and carbon sequestration”. The scientific and technical nature of these services is unlikely to be associated with the Opponent, and the word VIRGIN has some descriptive applicability. Although the services “Advisory and consultancy services in the field of carbon offset sequestration” and “carbon offsetting services” have been specified in class 42, it is not clear from their descriptions that they are concerned with the scientific or technical aspects, rather than financial aspects, of those services. For that reason I consider it likely that the Australian public would be confused or deceived. I also consider that the scientific and technical aspects of those services are already encompassed within the description “technical and scientific services in relation to carbon offsetting, carbon trading and carbon sequestration; scientific, industrial and technological research in relation to carbon offsetting and carbon sequestration” for which the ground is not established.
To summarise then, I am satisfied that the Opponent’s trade marks have a reputation such that the Applicant’s use of its mark in respect of the services in class 36, and “Advisory and consultancy services in the field of carbon offset sequestration” and “carbon offsetting services” in class 42, would be likely to deceive or confuse the Australian public. There is therefore no need to discuss them further in respect of the remaining grounds of opposition, and so the remainder of this decision will address the goods in class 1 and the services “technical and scientific services in relation to carbon offsetting, carbon trading and carbon sequestration; scientific, industrial and technological research in relation to carbon offsetting and carbon sequestration” in class 42.

Section 43

In its submissions at the hearing the Opponent accepted that if it could not make out the ground under section 60, it would also be unable to establish the ground under section 43. I will therefore dispense with this ground only briefly. In the context of the remaining services I am not satisfied that there is a secondary meaning in the Applicant’s trade mark such that it carries an inherent connotation (such as one of sponsorship or association) likely to deceive or confuse. Consequently the ground is not established.

Section 58

Section 58 of the Act provides:

Applicant not owner of trade mark

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note: For applicant see section 6.

In order to establish an opposition under section 58 it must be shown that:
·the respective trade marks of the parties are either identical or substantially identical[13];
·the respective goods or services of the parties are the ‘same kind of thing’[14]; and
·the Opponent’s trade mark use was prior to both the application to register and any actual use of the trade mark by the Applicant[15].
[13] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd (1994) ALR 495
[14] Re Hicks’ Trade Mark (1897) 3 ALR 75
[15] Settef SpA v Riv-Oland Marble Co (Vic) Pty LTd (1987) 10 IPR 402
In its submissions the Opponent states that the attack based on section 58 is not directed to the goods in class 1, and so I will address only the services “technical and scientific services in relation to carbon offsetting, carbon trading and carbon sequestration; scientific, industrial and technological research in relation to carbon offsetting and carbon sequestration” in class 42.
The Opponent relies largely upon its use of VIRGIN GREEN FUND and submits that it is a trade mark that is substantially the same as the Applicant’s trade mark, and was used by it in respect of services which are ‘the same kind of thing’ as those of the Applicant. The uses to which the Opponent points are the creation of VGF in the UK 2007 and the associated website later that year, and the use of VIRGIN GREEN in a ‘Daily Telegraph’ article dated 15 March 2008[16].
[16] At exhibit MO-7 of the Odai declaration.
In respect of VGF I am not satisfied that the services are ‘the same kind of thing’ nor that first use in Australia has been established. VGF is a private equity firm that invests in businesses in the renewable energy and resource efficiency sector. It does not itself provide any renewable energies or resource efficiencies. I note that ‘the same kind of thing’ is a narrower test than ‘services of the same description’[17]. Whilst there may be a similar ultimate purpose (to improve the environment) I am not satisfied that investment in businesses is the same kind of thing as “technical and scientific services in relation to carbon offsetting, carbon trading and carbon sequestration; scientific, industrial and technological research in relation to carbon offsetting and carbon sequestration”. Nor does use upon the website satisfy me as to first use. The website is not specifically directed at Australia (although investment proposals could be submitted from Australia) and there is no indication of when or how many Australians have accessed it.
[17] Krone AG v Brook (t/as Cannon Watch Co) (1996) 34 IPR 340
The use of VIRGIN GREEN in the ‘Daily Telegraph’ article is not use as a trade mark. The article states, under the heading “Charity night by candlelight”, “VIRGIN Green were more than happy to join the merry bandwagon participating in the Earth hour challenge.” I consider this use to be merely a reference to an entity that attended an event rather than an example of any use as a badge of origin for goods or services.
Consequently I am not satisfied that the Opponent has established use of VIRGIN GREEN FUND or VIRGIN GREEN, as trade marks, in Australia before the priority date of the subject application, and the ground under section 58 fails.

Section 59

Section 59 of the Act provides:

Applicant not intending to use trade mark

59. 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.
Note: For applicant see section 6.

A mere allegation of non use is not enough by itself to shift the onus of proof to the Applicant, however where a prima facie case against it has been made then it is for the Applicant to rebut the allegation.[18] The time at which the intention must exist is the date the applications were filed, being 23 November 2009.[19]
[18] Estex Clothing Manufacturers Pty Limited v Ellis and Goldstein Limited (1966) 116 CLR 254.
[19] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 86 IPR 437; Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391.
The Opponent submits that the Applicant does not intend to use the Trade Mark in respect of all of the goods and services specified in the application. It submits that the onus has shifted to the Applicant to prove its intention, based upon the fact that Ms Hayne undertook searches to reveal the extent of use of the Trade Mark and could find none in relation to services in classes 36 and 42. Specifically Ms Hayne refers to material on the Applicant’s website at (which includes the earlier referred to booklet exhibited in Prentice 1) which does not anywhere use the name VIRGIN GREEN, but rather ‘Agripower’. It was also submitted at the hearing that if there was any real intention to use the Trade Mark by the Applicant, it would be indicated somewhere within the booklet – a professional document used to attract interested parties to the product. The Opponent further submits that Sharwood v Fuddruckers[20] applies here, where a delay in commencing use of the trade mark was one of the factors of the case.
[20] (1989) 15 IPR 188.
In respect of the last point, I do not consider that Fuddruckers applies – other extenuating circumstances existed which are not present here (including that there were four applicants at whose locations it would have been illegal to carry on a restaurant to which their trade mark was to be applied and they had adduced no evidence in answer to the opponent’s).
Nor am I satisfied that the onus has shifted to the Applicant. Mere non-use of a trade mark does not shift the onus. Dodds-Streeton J in Suyen Corporation v Americana International Limited observed 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.
I am not satisfied that the Opponent has presented any other factors which might be considered to shift the onus, and the Applicant therefore has no case to answer. In spite of this the Applicant has made positive statements in its declarations that it intends to use the Trade Mark in respect of the specified services and that it has not yet done so precisely for the reason articulated by Dodds-Streeton J, above. It has also provided the letter from Baker & McKenzie in its further evidence from which one could, if necessary, infer that the requisite intention existed before the filing of the application.

Accordingly the ground of opposition under section 59 has not been established.

Decision

Section 55 of the Act relevantly provides:
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.
Note: For limitations see section 6.
I find that the ground of opposition under section 60 is established in respect of all of the services specified in class 36 of the application, and in respect of “Advisory and consultancy services in the field of carbon offset sequestration” and “carbon offsetting services” in class 42. That being the case, I will allow the Applicant one month from the date of this decision to amend its application by deleting those services from it.
If the application is so amended, I direct that it may proceed to registration. In the event that the services are not so amended, I refuse the application in its entirety.
If the Registrar has been served with a notice of appeal registration shall not occur until the appeal has been discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

Costs

Each of the parties has requested costs. As neither party has been entirely successful I decline to make an award of costs against any party. I consider that the appropriate course on this occasion is that each party should be responsible for meeting its own costs.

Nicole Worth

Hearing Officer

Trade Marks Hearings

24 September 2013