Yardy Legal Pty Ltd v Fashion One (Oceania) Pty. Ltd

[2018] ATMO 30

TRADE MARKS ACT 1995

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

Re:Opposition by Yardy Legal Pty Ltd to application under section 92 of the Act by Fashion One (Oceania) Pty Ltd to remove trade mark number 1106937 - Trade Markers (42) - in the name of Yardy Legal Pty Ltd

Delegate:

M. Cooper

Representation:

No submissions made

Decision:

2018 ATMO 30

Opposition to application to remove trade mark from Register for non-use under s.92(4)(b) of the Trade Marks Act 1995 – non-use established – Registrar’s discretion under s.101 not exercised.

Background

1. This matter concerns the opposition by Yardy Legal Pty. Ltd.  (‘the Opponent’) to an application under s.92(4)(b) of the Trade Marks Act 1995 (‘the Act’) by Fashion One (Oceania) Pty. Ltd. (‘the Applicant’), to remove its trade mark no. 1106937 from the Register for non-use.

2. On 4^th April 2006, the Opponent applied to register the trade mark below (allocated trade

mark no. 1106937):

(‘the Trade Mark’)

1. The services for which the Trade Mark is registered are as follows:

Services

Class 42:

Trade mark attorney and agent services including searching, preparing and filing applications, registration, prosecution, renewal, renewal enforcement and advice services in respect of trade marks; advice services in respect of intellectual property rights; intellectual property audits including services relating to systemising intellectual property activity for others; legal research services; legal compliance services; legal risk assessment and legal risk management services; legal services including due diligence services; intellectual property strategy services for others; intellectual property searching, intellectual property watching services; intellectual property project management services; assignment and/or licensing of trade marks and intellectual property; copyright management; research and development of intellectual property best practice models; trade mark creation and design services, patent attorney and agent services including searching, preparing and filing applications, registration, prosecution, renewal, renewal enforcement and advice services in respect of patents; legal searching services, drafting services, preparing and filing applications, registration; consulting in trade mark, patent, industrial design and copyright matters; litigation services; licensing of intellectual property; professional advice relating to branding, licensing and exploitation of trade mark and patent rights; trademark and brand name monitoring services; advice relating to trade marks, brands and other intellectual property; monitoring brand names and trademarks for infringement; trademark infringement prevention services; legal portfolio management including managing intellectual property portfolios; legal administration and legal support services; legal project management services; information, advisory and consultancy services in relation to the aforementioned services; enforcement of trade mark rights, graphic design services; website development and design services; provision of information, advisory and consultancy services in relation to graphic design and website development; prosecution of applications for trade marks; trade mark attorney and agent services being the provision to customers of kits containing information and advice in relation to the drafting and filing of trade mark and patent applications, and consultancy services related thereto; services provided to individuals, unincorporated businesses and corporations relating to the protection, exploitation and enforcement of industrial and intellectual property rights; intellectual property law and information technology law services, including consultancy, legal and advisory services relating to intellectual property provided by patent and trade mark attorneys, non patent and trademark attorneys, lawyers and solicitors relating to patents, trade marks, designs, copyright, licensing, circuit layouts, plant breeders rights, domain names, renewals, infringement and validity advice; searching, investigation and enquiry services relating to patents, trade marks, designs, copyright, circuit layouts, trade names, business names, company names, domain names and plant breeders rights; computer services, computer searching services and renewal services, all relating to intellectual property; providing information and consultancy services, including by electronic means via a global computer network, about all of the aforesaid services

1. This application for removal for non-use under s.92(4)(b) of the Act was made on 26 November 2015 by Fashion One (Oceania) Pty. Ltd. (‘the Applicant’). It was made in relation to all of the services for which the Trade Mark is registered.

2. A Notice of Intention to Oppose the removal application was filed by the Opponent on 20 January 2016. On 19 February 2016 it filed its Statement of Grounds and Particulars (‘SGP’).

3. A Notice of Intention to Defend was filed by the Applicant on 21 March 2016.

Evidence

1. The evidence filed in relation to this removal opposition comprises:

   ·     Evidence in Support

   Ø  Declaration of Kenneth William Yardy, Director of Yardy Legal Pty. Ltd., dated 8 August 2016 with Annexures A – C, (‘First Yardy declaration’).

   ·     Evidence in Answer

   Ø  Declaration of Michael Gleissner, Director of Fashion One (Oceania) Pty. Ltd. dated 17 October 2016, with Exhibits 1-2 (‘Gleissner Declaration’).

   ·     Evidence in Reply

   Ø  Declaration of Kenneth William Yardy dated 24 February 2017, with Annexure A (‘Second Yardy declaration’).

2. Notwithstanding invitations to do so, neither party requested a hearing nor made written submissions.

The Opponent’s Evidence

1. In its SGP, the Opponent claimed that the Trade Mark had been used in good faith at all times during the three years preceding the application, namely in the provision of legal services and the like under class 42, and that it continues to be used in good faith in accordance with the provisions of the Act.

2. The Opponent specifically claimed that ‘use of the trade mark in the relevant period has been by way of, but not limited to: 1.Industry trade shows. 2. website. 3. business cards; and 4. promotional material.’

3. In support of the above assertions in the SGP, the Opponent annexed photographs of 2 sets of business cards, 2 t-shirts and 3 mugs bearing the Trade Mark (as well as business cards in the firm’s name which did not bear the Trade Mark). In addition, redacted ‘Matter Slips’ summaries were provided for the period 12/4/12 – 2/8/13 and for 7/7/15, as well as a redacted ‘Matter Ledger’ for 2014 indicating one trade mark matter. These were said to be evidence of revenue derived from the provision of services ‘in relation to which the trade mark is registered’.

4. It was further claimed in the SGP that the Opponent is the registered owner of the domain name ‘trademarkers.com.au’, and users are directed from this domain name to ‘yardylegal.com.au/intellectual-property-and-trademarks’. A single page, without any indication of its source or date, was attached, headed ‘Intellectual Property and Trademarks’. It stated, among other things, that ‘TradeMarkers’ was a division of Yardy Legal specialising in intellectual property law. It listed the services provided in this regard. Also attached were two invoices from ‘netregistry’, dated July 2013 and July 2015, for renewal of the Opponent’s domain name ‘trademarkers.com.au’.

5. These claims, and the evidence, were repeated in the Opponent’s Evidence in Support.

6. In its Evidence in Reply, the Opponent incorrectly recited the Applicant’s allegations as concerning s.92(4)(a) of the Act, however it correctly identified the substance as being an allegation that the Trade Mark had not, at any time in the period 26 October 2012 to 26 October 2015, been used in good faith in relation to the relevant services. The Opponent also characterised the Applicant’s Evidence in Answer as being based on the Opponent’s lack, or limited use, of the Trade Mark on the Internet and noted that the Act does not require such use. Relying generally on the decision in ‘Woolly Bull Enterprises P/L v Reynolds [2001]’, the Opponent argued (incorrectly) that ‘the applicant must show that at ‘no time’ during the relevant period has the trade mark been used in relation to the relevant goods’ [in this case, services]. The claim that the Trade Mark was used throughout the relevant period in good faith at ‘numerous trade shows and industry events’ was reiterated. It was also contended that use was further demonstrated by way of the Trade Mark’s ‘aural representation’ to the public by the director and the staff, while wearing shirts ‘emblazoned’ with it, and by disseminating business cards and various merchandise depicting the Trade Mark. The previously submitted photographic copies of business cards, T-shirts and mugs displaying the Trade Mark were attached.  It was further claimed that this photographic evidence was objective proof of the provision of services consistent with the class of services for which the Trade Mark is registered. In addition, an excerpt of the Opponent’s ‘Combined Matter Ledger’ as at 1/02/17 was provided which purported to demonstrate the delivery of the Class 42 services relating to the claimed use over the relevant period (with confidential information redacted).

The Applicant’s evidence

1. As noted above, the Applicant sought that the Trade Mark be removed under s.92(4)(b) for non-use for all the services for which it is registered. The period of non-use was asserted to be from 26 October 2012 to 26 October 2015 (‘the relevant period’).

2. In its Evidence in Answer, the Applicant contended that the Trade Mark was not put to genuine commercial use in Australia. In respect of the Opponent’s claimed use,  Mr Gleissner stated in summary as follows:

   ·     Following a Google search for the words, trade markers, ‘not a single search result’ included the disputed trade mark owned by the Opponent. The displayed results linked only to a professional trade mark protection firm in New York. Screenshots of the search results were exhibited.

   ·     None of the pages of the Opponent’s website, contain the Trade Mark in its registered form, referring only to ‘TradeMarkers’ as a ‘division of Yardy Legal that specialises in intellectual property law.’ The web pages were supplied as Exhibit 2.

   ·     The Opponent’s submission of 8 August 2016 (the First Yardy declaration) provided no evidence of anyone from Australia visiting or using the website  ‘utilising the services in commerce that the Proprietor claims to offer in Class 42 under the disputed AUTM.’

   ·     The statement of accounts (redacted matter slips), supplied by the Opponent as evidence of use, only refer to invoice numbers and amounts with no indication that the services were provided to the receiving party under the Trade Mark.

   ·     The Opponent’s claims of commercial use of the Trade Mark in good faith in relation to the class 42 services were not supported by any ‘solid factual evidence’ such as invoices, payment receipts or customer feedback.

Legislation

1. Section 92 of the Act relevantly provides as follows:

   92 Application 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:

[...]

(b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the nonuse 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.

Onus

1. In respect of the proceedings under section 92, s.100 of the Act provides that the Opponent bears the onus of rebutting the allegation of non-use.

Consideration and Reasons

1. There is no evidence of any action concerning the Trade Mark pending in a court (s.92(3)). Based on the available records, the Trade Mark has been registered since 4 April 2006, that is, it has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application was filed. (s.92(4)(b)). It is also self-evident that it has been over 5 years since the filing date of the application for registration (s.93).

2. Therefore, in the circumstances of this matter and for the purposes of s.92(4)(b), the issue for consideration concerns the allegation that the Opponent has not used the Trade Mark, or used it in good faith, in Australia, during the relevant period, in relation to all the services to which the application relates. The Trade Mark the subject of this application is registered in respect of services, including legal advice on trade mark and patent applications.

3. As noted above, section 100(1)(c) of the Act stipulates that it is for an Opponent to rebut any allegation made unders 92(4)(b). If the Opponent establishes use of the Trade Mark, (or the Trade Mark with additions or alterations not substantially affecting its identity), or that there was an obstacle to use of the Trade Mark during the relevant period, it is taken to have rebutted the allegation: s.100(3). A single instance of bona fide use during the relevant period is all that is required[1].

   [1] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261 [14-17].

4. Even if the grounds of the non-use application are established, the Registrar has a discretion, under s.101(3) of the Act, to decline to remove the trade mark, or to remove it in respect of only some of the goods and services identified in an application, if satisfied that it is reasonable to do so. In deciding whether to exercise the discretion not to remove the mark the Registrar may take into account whether the registered owner has used it in respect of similar or closely related goods and services (s.101(4)).

Use of the mark in Australia

1. The threshold issue therefore is whether the Opponent has rebutted the Applicant’s allegation under s.92(4)(b) that its Trade Mark has not, at any time during the relevant period been used, or been used by it in good faith, in Australia, in relation to the services to which it relates.

2. In relation to use, the comments of the Federal Court in Liquid Engineering[2] are pertinent, as follows:

   Before proceeding any further, I first note in Brother Industries Ltd v Dynamic Supplies Pty Ltd [2007] FCA 1490; (2007) 163 FCR 530 at [53]- [54], Tamberlin J pointed out that under ss 7 and 9 of the TMA, a trade mark is taken to be used in relation to goods and services if it is applied to, among other things, packaging labels, signs, invoices, business letters, and business papers. Here, the word "Liquideng" was applied by Edwards and LFS in just such ways. It follows that application of that word was its use as a trade mark.

   [2] Edwards v Liquid Engineering 2003 Pty Ltd [2008] FCA 970 [21], this finding not disturbed on appeal

3. Section 7(2) of the Act also specifically provides in certain circumstances that any aural representation of a trade mark constitutes use of the trade mark.

4. As noted above, the Opponent’s submissions included copies of photographs of use of the Trade Mark on T-shirts, mugs and business cards, asserting that it was used throughout the relevant period, in good faith, at numerous trade shows and industry events. In addition matter slips and selected items from the ledger were provided which were claimed to depict delivery of the category of services for which the Trade Mark is registered. Invoices for renewal of the domain name, 'trademarkers.com.au’, were also attached. It was also claimed that the Trade Mark had been aurally represented.

5. I make the following observations regarding the evidence and materials produced by the Opponent.

   ·     The photographs of the mugs, business cards and T-shirts containing the Trade Mark do not demonstrate their date of production nor where and when or to what use they were put. There is no objective evidence which demonstrates their production and/or use in the relevant period. No invoices or other material, such as order forms, were supplied.

   ·     The photographs show the names of persons on Yardy Legal business cards but no names appear on the 2 sets of the business cards bearing the Trade Mark.

   ·     The claims made regarding industry and trade show attendance are not detailed as to dates nor are they accompanied by any objective evidence which might support the Opponent’s assertions in this regard, such as lists of exhibitors or participants that included the Opponent.

   ·     No statements in support of the Opponent’s claims are provided from the persons who are said to have made aural representations or otherwise used the Trade Mark or distributed the merchandise, and/or who might reasonably have been expected to have knowledge of use of the Trade Mark, such as its clients or persons engaged by the firm.

   ·     The copies of invoices from ‘netregistry’ demonstrate only that the Opponent was invoiced (and paid) for renewal of the domain name ‘trademarkers.com.au’ for 2013-2015 and 2015-2017.

   ·     Aside from the Opponent’s assertions that this URL, that is, ‘trademarkers.com.au’, directed persons to the Yardy Legal website, no supporting evidence was provided of any actual use of the domain name by the Opponent or by its clients or customers. No data was supplied indicating visits to, or redirections from, the website, or of orders or requests for goods or services following use of it.

   ·     The single page headed ‘Intellectual Property and Trademarks’ attached to the SGP which contains the use of the word ‘TradeMarkers’ and, it is inferred, represents the page to which persons are redirected from the domain name ‘trademarkers.com.au’, is undated and does not identify its source or location.

   ·     In relation to the Matters Ledger and Matter Slips summaries, the information provided is documented under the firm’s name ‘Yardy Legal’. While the summaries appear to demonstrate that Yardy Legal performed Trade Mark-related services during the relevant period, there is no representation of the Trade Mark in any form in any of these slips or ledger extracts. No invoices or receipts or other materials were provided confirming use of the Trade Mark in relation to the services delivered.

6. I note that the Opponent’s circumstances in this regard are not analogous to some other cases in which, although direct commercial use of the mark was not demonstrated, use was accepted on the basis of other activities such as the supplies of samples[3], of expenditure on packaging and promotional videos and trade presentations[4] or the combination of the purchase of business cards, printing of letterheads, approaching of potential advertisers and soliciting them for advertisements[5]. The court in Dick Smith Investments Pty Ltd v Ramsey, also considered whether something short of the actual sale of goods could amount to trade mark use. Noting that ‘considerable funds had been invested’ in the development of the Ozemite brand, it stated that ‘[w]hat matters is whether the mark was being used as a trade mark to distinguish the prospective product from the products of other. The references to Ozemite in two promotional pieces answers this question.’ The two promotional pieces were high level, national broadcasts. The court found that ‘Mr. Smith’s promotion of Ozemite was an expression of a genuine intent to use the mark for commercial purposes. Consequently each involved a use of the mark in good faith for the purposes of s.94(1)(b)(ii).’[6]

   [3] Kronborg Isager v Boboli International Inc (1990) 18 IPR 526

   [4] NSW Dairy Corporation v Murray-Goulburn Co-operative Co. Ltd. [1989] FCA 124

   [5] Buying Systems (Aust) Pty Ltd v Studio SRL (1995) 30 IPR 517

   [6] Dick Smith Investments Pty Ltd v Ramsey [2016] FCA 939 [155-157]

1. In this matter, other than the assertions in the Opponent’s SGP and declarations, and the uncertified, undated photographs of a relatively small amount of merchandise and business cards, there is a dearth of evidence in support of the claims made of use in the relevant period. Specifically, as noted above, there is no evidence of any expenditure on any of the merchandise or business cards, or their date of production, nor is there any supporting objective evidence of any of the trade or industry shows purportedly attended, nor any statements in support, for example, from the staff who it is claimed wore the T-shirts and/or used the mark in aural representations. The evidence is non-specific as to the dates of trade show attendance and the production and use of these materials. Moreover, there is no explanation of the absence or omission of any such evidence in support. The Applicant’s allegations (in paragraphs 5 and 6 of the Gleissner declaration) go largely unanswered, notwithstanding the Opponent’s opportunity to do so in its Evidence in Reply.

2. In summary, I find that the Opponent’s claims as to use of the Trade Mark in relation to the services, during the relevant period, are not substantiated.

Is the domain name evidence of use of the Trade Mark?

1. While the ‘netregistry’ invoices indicate that, during the relevant period, payment was requested and made for the domain name ‘trademarkers.com.au’, the Applicant’s evidence of its unsuccessful internet searches casts doubt on any active use of the domain name during this (or any other) period. I note that the search results provided in the Gleissner declaration (page 1 of exhibit 1) indicate a Facebook page for ‘Trade Markers’ in Sydney. This entry indicates it is for a ‘Criminal Lawyer’ and that it is a ‘Local business specialising in Liquor Licensing’. Therefore, even if the use of the words alone in this context was sufficient to constitute use of the Trade Mark (and this is discussed further below), it is not ‘use of the trade mark in physical or other relation to the services’ (s.7(5)) or use ‘in relation to the relevant goods and/or services’ as required by s.100(3). Furthermore, so far as can be ascertained on the Applicant’s screen printouts, they are dated June 2016 and therefore, even if it did constitute use, it was not use during the relevant period.

2. Other than this, there is nothing in the evidence that demonstrates or supports a finding that the Opponent’s ownership of the domain name during the relevant period constitutes use of the Trade Mark. Mere registration of a domain name does not amount to use. As the court said in Sports Warehouse, Inc v Fry Consulting Pty Ltd[7]:

   It is not suggested that mere registration of a domain name can amount to use of the mark. More must be shown. Plainly enough, not all domain names will be used as a sign to distinguish the goods or services of one trader in the course of trade from the goods or services of another trader. Sports Warehouse is correct in its submission that whether or not a domain name is used as a trade mark will depend on the context in which the domain name is used. In this case, the domain name is more than an address for a website, the domain name is also a sign for the applicant’s online retaining (sic) service available at the website. In the context of online services, the public is likely to understand a domain name consisting of the trade mark (or something very like it) as a sign for the online services identified by the trade mark as available at the webpage to which it carries the internet user.

   [7] Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 186 FCR 519; 87 IPR 300; [2010] FCA 664 [153]

3. This reasoning was adopted in Solahart Industries Pty Ltd v Solar Shop Pty Ltd[8]. In that case an analogy was drawn between a domain name used to conduct a website from which goods or services are sold and a sign on a shop front indicating that goods are sold within that shop. In that matter, Solarhut had advertised its services by reference to its trade mark ‘SOLARHUT’ and had invited consumers to use its website located at ‘ Goods were available for purchase at the website under the name SOLARHUT. The court said in those circumstances it was clear that there was trade mark use as the domain name was ‘largely analogous to a shop front’.

   [8] Solahart Industries Pty Ltd v Solar Shop Pty Ltd [2011] FCA 700 [50]

4. In this matter the evidence does not establish that ‘trademarkers.com.au’ is anything more than a domain name. The Opponent’s submissions acknowledged that the services are not available at this site, but claimed that searchers are redirected to another site, namely, ‘ Therefore the ‘sign’ from which the Opponent’s services are claimed to be available is a different website and resolves from a different domain name which bears no resemblance to the Trade Mark.

   [9]While the Opponent has claimed that persons using ‘trademarkers.com.au’ are redirected to ‘yardylegal.com.au’ no evidence of this website was produced by any party. The Applicant’s searches in June 2016 revealed a website ‘yardy.com.au’ as the Opponent’s website. For the purposes of the above discussion, nothing turns on this other than to underscore the insufficiency of support for the Opponent’s claims.

5. Furthermore, the Opponent has provided no evidence of any searches for, or visits to, the website, or of these redirections, or anything else associated with the set-up of, and use of, the domain name such as would enable a finding that its ownership of the domain name might be appropriately characterised as use of the Trade Mark. There is no objective basis on which to find that there were in fact any redirections from the domain name or that it operated by way of a “shop front” from which the goods or services were available for purchase.

6. On this basis I am not satisfied that the Opponent’s mere ownership of the domain name alone evidences use of the Trade Mark, in relation to the services, during the relevant period.

Has there been use of the Trade Mark with alterations or additions that do not substantially affect its identity?

1. Section 100(3)(a) relevantly provides that that the Opponent is taken to have rebutted the allegation of non-use of the Trade Mark in the relevant period by establishing that the Trade Mark, or the Trade Mark with additions or alterations not substantially affecting its identity, has been used in good faith by its registered owner in relation to the relevant goods and/or services during that period.

2. As noted above (paragraph 16), the Applicant’s evidence indicated that the words of the Trade Mark appear on the yardy.com.au website as ‘TradeMarkers’. The Opponent, with its SGP, also attached a copy of the page (but without any relevant identifying information). As also noted above, the Applicant submitted this was not use of the Trade Mark in its registered form. This is self-evidently correct. The registered mark is two separate words, contains a device, is highly stylised and contains quite striking visual elements that are not replicated by the use of the words only.

3. Nevertheless the question arises, as noted above, whether this representation of the Trade Mark on the Opponent’s website should be characterised as use of the mark ‘with alterations or additions that do not substantially affect its identity’, such that the Opponent might be taken to have rebutted the Applicant’s allegation of non-use: s.100(3).

4. As the Court said in Optical 88 Limited v Optical 88 Pty Limited (No. 2) (’Optical 88’) when considering this issue[10], (bold emphasis added):

   Is the modified ‘707 mark a use of the ‘707 mark with additions or alterations not substantially affecting its identity? In order for that question to be answered affirmatively it is necessary to find that a total impression of similarity emerges from a comparison between the two marks: Carnival at 391; Shell at 414. In my view a total impression of similarity does emerge from a comparison of the modified ‘707 mark with the ‘707 mark itself. I therefore find that, by using the modified ‘707 mark, the applicant used the ‘707 mark with additions or alterations not substantially affecting its identity.

   [10] Optical 88 Limited v Optical 88 Pty Limited (No. 2) [2010] FCA 1380 [256]

5. In this application the single, evidenced use of the word ‘TradeMarkers’ on the yardy.com.au website, reflects merely the words of the Trade Mark. No total impression of similarity emerges from a comparison between the two marks. This is because, as previously noted, the registered mark is highly stylised and contains quite striking visual elements that are not replicated by the use of the combined words only. Therefore I consider that the alteration in the appearance of the mark, as between the Trade Mark as registered and its use on the Opponent’s website, does substantially affect its identity. It follows that the Opponent’s use of the word “TradeMarkers” on its website cannot be properly characterised as use of the Trade Mark in Australia, ‘with additions or alterations not substantially affecting its identity’, so as to effectively rebut the allegation of non-use: s.100(3)(a).

6. If I am wrong, and the word ‘TradeMarkers’ can properly be characterised as an alteration that does not substantially affect the Trade Mark’s identity, I have also considered whether the reference to it on the Opponent’s website is sufficient to constitute use.

7. Although there is evidence of delivery of the services in Class 42 (by way of the ledger entries), it has not been established that this was in any way related to use of the Trade Mark, either as registered or as represented on the Opponent’s website. The Opponent has not provided any evidence of downloads or associated orders or delivery of services in Australia that used the Trade Mark in any form. In addition, the single page attached the Opponent’s SGP, in which the word “Trademarkers’ appears, contains no identifying information such as the source or location of the reference or the date it appeared. Crucially, the Applicant’s exhibited download of the website page, which includes the reference, appears to be dated June 2016 – well outside the relevant period. In this context therefore, even if the use of the word ‘TradeMarkers’ on the Opponent’s website could be characterised as use of the Trade Mark, there is no demonstrated use of it during the relevant period.

8. For the above reasons, I am not satisfied that use of the word ‘TradeMarkers’ on the Opponent’s website constituted either

   ·use of the trade mark and/or

   ·use of the trade mark during the relevant period.

Conclusions as to use

1. As the Court commented in Optical 88:

   The onus falls on the opponent to the removal application (in this case, the applicant in the proceeding) to rebut the allegations that have been made: see s 100(1). It is, of course, the opponent who will know what use, if any, it has made of the mark the subject of the removal application. The opponent cannot be heard to complain of what might be found to be deficiencies in proof of the use that is relied on in order to rebut the allegation of non-use, when it has the means at its disposal to show precisely how, when and where the challenged mark was used.

   The applicant for removal (the first respondent in this proceeding) bears no risk in that regard and, as s 100(1) recognises, is entitled to stand squarely behind the allegations that are made to actuate s 92(4)(a) and s 92(4)(b)…. Thus it is the opponent (the applicant in this proceeding) who must make good the case, in all its dimensions, for a challenged mark to remain on the Register.[11]

   [11] Optical 88 Limited v Optical 88 Pty Limited (No. 2) [2010] FCA 1380 [204-5]

2. I consider that the Opponent would have had ‘the means at its disposal to show precisely how, when and where the challenged mark was used’ however it has failed to do so. It had the option of a hearing, at which many of its broad submissions could have been discussed and clarified, but elected not to request it or to provide any further submissions.

3. Having carefully considered the Applicant and Opponent’s evidence and submissions, for the reasons above, I attach little weight to the Opponent’s largely unsubstantiated claims of use of the Trade Mark. On this basis, I am not satisfied that there was any Trade Mark use by the Opponent, genuine or otherwise, during the relevant period in relation to the goods and/or services, or use of the mark with additions or alterations that did not substantially affect its identity, within the meaning of s.100(3)(a).

4. There is no evidence or claim that the mark has been relevantly assigned for the purposes of s.100(3)(b) nor of any circumstances that were an obstacle to its use under s.100(3)(c).

5. It follows that the Opponent has not discharged its obligation to rebut the allegation made by the Applicant under s.92(4)(b) that, in the 3 years ending one month before the date of the Application, the Trade Mark had not been used, or used in good faith by the Opponent in relation to the relevant services in Class 42.

6. I am satisfied that the grounds on which the application was made have been established: s.101(1). It remains for me to determine whether to exercise the discretion not to remove the Trade Mark (s.101(3)).

Registrar's discretion

1. Even where grounds for removal have been established, s.101(3) of the Act provides that, if the Registrar or the court is ‘satisfied that it is reasonable to do so’, it may decide the trade mark should not be removed from the Register.

2. No submissions were made by either party in relation to the exercise of the s.101(3) discretion. Although the Opponent also bears the onus in this regard, I have proceeded to apply the relevant law and authorities to the material and submissions which have been filed.

3. As was succinctly stated by the Full Court in a joint judgment in Austin, Nichols & Co Inc v Lodestar Anstalt (‘Lodestar’), the question to be asked is ‘whether it was reasonable not to remove the trade mark from the Register, although the trade mark had not been used during the statutory period’ and ‘for the discretion to operate in favour of the registered owner, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed’. The time for such an assessment is the time at which the Court [or the Registrar] makes the decision.[12]

   [12] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8 [28], [41] and [44].

4. Pertinently the Full Federal Court also said at [38]:

   The purpose of Pt 9 is to provide for the removal of unused trade marks from the Register. In that regard it is plainly designed to protect the integrity of the Register, and in this way, the interests of the consumer. At the same time, however, it seeks to accommodate, where reasonable, the interests of the registered trade mark owners. Otherwise, there would be no need for the discretion.

5. The applicable principles, as stated by Flick J in E & J Gallo Winery v Lion Nathan Australia Pty Ltd (‘Gallo Winery’)[13] and as adopted in Optical 88, require that ‘the discretion under s 101(3) is not conditioned on the need to establish ‘exceptional circumstances’ before the discretion can be exercised favourably to the trade mark owner’ and that ‘it is the opponent for removal who bears the burden of persuasion on that issue’.[14]

   [13] E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2008) 77 IPR 69; [2008] FCA 934 [193]-[213]

   [14] Optical 88 Limited v Optical 88 Pty Limited (No. 2) [2010] FCA 1380 [273]

6. In Gallo Winery Flick J applied the five (non-exhaustive) factors listed by Falconer J in Hermes Trade Mark [1982] RPC 425 for consideration in the exercise of the discretion, as follows:

   • there had been no abandonment of the trade mark;
   • the registered proprietors of the mark still had a residual reputation in the mark;
   • there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;
   • the applicants 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;
   

   [15] E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2008) 77 IPR 69; [2008] FCA 934 [202]

   • the registered proprietors were not aware of the applicant’s sales under the mark.[15]

7. The latter two factors are not relevant in the circumstances of this application. In relation to the others, while it cannot be positively stated that the Trade Mark has been abandoned, there is no reliable evidence of any residual reputation or sales since the relevant period ended.

8. Additional and similar factors were also considered Lodestar. The Full Federal Court, although overturning Cowdroy J’s decision, agreed with the factors he had listed as relevant (but not determinative of) the issues.[16] These are usefully summarised[17] as including:

   ·Evidence of the international profile of the owner’s product;

   ·Use in Australia of the trade mark after the period of non-use and the owner’s clear intention to use it in the future;

   ·The period of non-use was not substantially greater than the minimum statutory period of non-use of three years;

   ·The absence of any evidence concerning "the prospect of confusion …nor of any public mischief" if the trade mark remained on the register; and

   ·The possibility that removing the trade mark may cause a degree of confusion to the public as a consequence of its use in Australia and internationally.

   [16] Austin, Nichols & Co Inc v Lodestar Anstalt (2012) 202 FCR 490; 287 ALR 221; [2012] FCAFC 8 [9-12].

   [17] Davison M and Horak I, Shanahan’s Australian Law of Trade Marks and Passing Off (Thomson Reuters (Professional) Australia Limited, 5^th ed, 2012) 70.2515

9. In consideration of the above factors and the Opponent’s circumstances, there is no substantiated evidence of any international profile or of use of the Trade Mark in Australia after the relevant period of non-use. While the Opponent maintains it has and will continue to use the mark, there is a dearth of persuasive or objective evidence to support this claim. I therefore attach little weight to it. In relation to the period of non-use, and whether it was substantially greater than the minimum statutory period of three years’ non-use, I note that the Trade Mark was registered in 2006, almost 12 years ago. On the basis of the findings above, the only objective evidence of its use are the photographs of the few items of merchandise and business cards, of unknown provenance and date, as supplied by the Opponent. It follows that, on the face of it, the period of non-use has been substantially greater than the minimum statutory period.

10. While there is no indication of any public mischief if the Trade Mark remains on the Register[18], there is correspondingly no evidence or claim of any market confusion which might arise, either in Australia or internationally, if the mark is removed. There is no evidence of reputation, of sales and advertising and promotional expenditure or direct evidence of consumer appreciation of the mark, or evidence from which such a reputation could be inferred. Even acknowledging that I am not precluded from consideration of the use of the Trade Mark outside the statutory non-use period (Lodestar paragraph 41) the evidence of any use is scant. Although the Opponent claims that the Trade Mark ‘is a valuable asset and we intend to continue to make use of the same in the course of trade …’, it has not produced any objective evidence of how its interests, economic or otherwise, might be affected by removal. Furthermore, there is nothing before me which establishes or even suggests that the public interest or the interest of consumers would in any way be detrimentally impacted by the removal of the Trade Mark.

    [18] On the ‘public interest’ in the purity of the Register, see Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 130 [22].

1. Section 101(4) of the Act provides that one of the factors which may be considered under section 101(3) is whether the Opponent has made use of the registered Trade Mark on similar goods or closely related services; or similar services or closely related goods. There is no claim or any evidence of such use.

2. As noted above, it is the Opponent which bears the onus of satisfying the Registrar that the discretion under s.101 ought to be exercised[19]. While acknowledging the broad discretion available under s.101(3), having carefully considered all the claims and material before me, and in the absence of any specific submissions in this regard, I am not satisfied in all the circumstances of this matter that it is reasonable to exercise the discretion not to remove the Trade Mark.

   [19] Optical 88 Limited v Optical 88 Pty Limited (No. 2) [2010] FCA 1380 [273]

Decision

1. Section 101 of the Act relevantly provides:

   (1) Subjection to subsection 3 and section 102, if:

   (a) The proceedings relating to an opposed application have not been discontinued or dismissed; and

   (b) The Registrar is satisfied that the grounds on which the application was made have been established;

   The Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

   ...

2. As the Opponent has not rebutted the allegation of non-use, the ground for removal has been established. It follows that the application for removal of the Trade Mark has been successful.

3. I direct that the Trade Mark be removed from the Register after one month from the date of this decision. If the Registrar is served with a notice of appeal on or before that time, the registration will not be amended or removed unless the appeal is withdrawn or discontinued. Otherwise, the registration will be subject to the decision of the Court.

Mary-Ann Cooper

Hearing Officer

Oppositions and Hearings

28 February 2018