Vision Group Holdings Limited v 3D Health Screen Pty Ltd

[2010] ATMO 114

TRADE MARKS ACT 1995

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

Re:Opposition by 3D Health Screen Pty Ltd to application under section 92 of the Act by Vision Group Holdings Limited to remove trade mark number 926313(44) - CURLED FORM SHUTTER DEVICE - in the name of 3D Health Screen Pty Ltd

Delegate:	Jock McDonagh
Representation:	Opponent: No appearance, relies on written submissions Applicant: Susan Gatford,  instructed by Clayton Utz solicitors
Decision:	2010 ATMO 114 Section 92(4)(b) opposition – insufficient evidence to establish use in relevant period – no grounds to exercise discretion – registration in respect of medical services to be removed from Register – costs awarded against opponent

Background

1. 3D Health Screen Pty Ltd (‘the opponent’) is the registered owner of a trade mark, current details of which appear below:

   Trade mark number:           926313

   Registered from:                  6 September 2002

   Goods:  Class 44: Medical and radiology services

   Trade mark:  

2. On 18 February 2009, Vision Group Holdings Limited (‘the applicant’) filed an application under section 92(4)(b) of the Trade Marks Act 1995 (‘the Act’) for partial removal of the trade mark from the Register. The applicant seeks removal of registration in respect of medical services.

3. On 11 June 2009 the opponent filed Notice of Opposition to the removal, claiming use of the trade mark in good faith, use of the trade mark during the relevant period, and seeking the Registrar’s discretion to retain the trade mark on the Register.

4. The matter came before me, as a delegate of the Registrar of Trade Marks, for hearing in Melbourne on 3 August 2010.  The opponent was not represented at the hearing and relied on written submissions by Ansimoff Legal. The applicant was represented by Susan Gatford of counsel instructed by Clayton Utz solicitors.

   Evidence

5. The following evidence was filed and served pursuant to legislation:

Declarant	Status	Date, Known as	Exhibits
Evidence in Support
Scott La Rocca	Solicitor	11.09.2009, La Rocca	SLR-1 (Gudex 1)
David William Gudex	Radiologist & director of opponent	7.10.2009, Gudex 2	GD6 to GD8
Evidence in Answer
Joseph Reich	Specialist cataract and refractive surgeon and alternate director of applicant	14.02.2010, Reich

1. La Rocca recites the history of the application for the opponent’s trade mark and also exhibits Gudex 1, which was filed and served in proceedings opposing the registration of a number of trade marks by the applicant in these proceedings. The exhibit provides some details of the use of the opponent’s trade mark.

2. Gudex 2 continues to assert use of the opponent’s trade mark, this time with specific regard to the period ending 18 January 2009 (“relevant period”) and to the sort of services in relation to which the trader mark has been used during the relevant period. Gudex exhibits screen shots of the opponent’s web site and also web pages of the NSW Government and from a professional body, all advise against the use of full body CT scans.

3. Reich provides details of the professional expertise of the deponent and addresses certain claims made by the opponent in La Rocca and Gudex 1 and 2. Reich concludes by stating that the opponent has only used its trade mark in relation to radiology services or services connected with and part of the opponent’s radiology services.

   Discussion

4. Section 92 relevantly states:

   92Application for removal of trade mark from Register etc.

   (1)Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register.

   (2)The application:

   (a)must be in accordance with the regulations; and

   (b)may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

   (3)An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register.

   Note:For prescribed court see section 190.

   (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 section 100 of the Act, the onus of establishing use of a trade mark lies with the opponent. To discharge the onus for section 94(4)(b), the opponent must provide evidence of a bona fide use of the trade mark during the non-use period. As mentioned earlier, that three year period ends on 18 January 2009.

6. The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co [1982] FSR 72. A single bona fide use of the mark during the non-use period is sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261 (2001) 51 IPR 149 ("Woolly Bull") at paragraph 17. However, Wilberforce J, in Nodoz Trade Mark (1962) RPC 1 at 7, said that if a registered owner relies on one single act of use of the mark, then that single act ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof.”

7. The tribunal may not be persuaded by evidence that is solely from the internal files of the opponent: Nodoz, supra; or of a circumstantial nature: Trina Trade Mark [1977] RPC 131; although one invoice, if genuine, will suffice: Geo W McPherson v Remington (1999) 47 IPR 636.

8. The evidence filed by the opponent is quite scant. Gudex 1 asserts that the opponent’s trade mark has been used on:

   ·Referral forms;

   ·Signage;

   ·Letterhead;

   ·CT scan X-ray film bags;

   ·Compact discs; and

   ·Internet web site.

9. However, the only examples exhibited with any of the two declarations are devoid of any indication of when they were used, and in the case of a referral form and letterhead, both are undated “templates”.

10. To the extent that there is any evidence of use of the trade mark, such use is invariably in conjunction with a word indicating some sort of radiology service, such as BODYSCAN, BONESCAN and BRAINSCAN. There is no evidence to support the contention that the trade mark was used with respect to medical services within the relevant period.

11. La Rocca and Gudex 2 provide some evidence suggesting that there is opposition to “total body” CT scans from the NSW Government, the Royal Australian and New Zealand College of Radiologists and the medical community generally. This is said to have limited the opportunities the opponent has for using its trade mark. Given that total body CT scans would be radiology services, and such services are not sought to be removed from the registration by the applicant, this evidence does not assist the opponent’s case.

12. The opponent made perfunctory submissions with regard to the exercise of the Registrar’s discretion under sub-sections 101(3) and (4) of the Act. The sole basis put forward for the exercise was that the opponent “had the Trade Mark during the relevant period in relation to similar services or closely related services (including radiology services)”.

13. As I mentioned in earlier paragraphs, the evidence of use of the trade mark was scant. Had I been required to turn my mind to whether or not it was used with respect to radiology services, it is questionable whether or not the opponent could have met the evidentiary burden.

14. However, the opponent’s trade mark is not liable for removal in respect of radiology services and, therefore, the trade mark remains on the register whether or not I remove the registration in respect of medical services. I am not satisfied that I should exercise the Registrar’s discretion in this case.

    Decision

15. The removal opponent has not discharged the onus of establishing use of its trade mark for medical services in class 44.

16. Accordingly, I direct that medical services in class 44 will be removed from the specification of trade mark no. 926313 after a period of one month from the date of this decision. If the Registrar is served with a notice of appeal on or before that time, the amendment will not be effected until that appeal has been discontinued or dismissed, or the registration will be subject to a decision made by the Federal Court.

    Costs

17. The removal applicant is the successful party and is entitled to its costs. Accordingly, I award costs against the opponent, as per Schedule 8 of the Trade Marks Regulations 1995.

    Jock McDonagh
    Hearings Officer
    Trade Marks Hearings
    25 November 2010