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    TRADE MARKS ACT 1995

    DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

    WITH REASONS

     IN THE MATTER of Trade Mark Application 1065790 (35, 36) INTUITA

    - in the name of Intuita Pty Ltd and opposition thereto by Intuit Inc.

DELEGATE: Debrett Lyons

    REPRESENTATION: Applicant: Colin Lagoon and Steven Barnes

    Opponent: Trevor Stevens of Davies Collison Cave, Patent & Trade

    Mark Attorneys

    DECISION: 2008 ATMO 98

    Section 52 opposition: section 59 established since applicant did not use

    or intend to use the trade mark

    Costs: Applicant to pay opponent’s costs.

Background

    1. On 20 July 2005, an application for the trade mark INTUITA was filed by Advanced Technology Environment Control Pty Ltd (the original applicant). By deed of

    assignment dated 1 January 2006, the application was transferred to Intuita Pty Ltd („the applicant‟).

    2. Current details of the application appear below:

    Application number: 1065790

    Filing date: 20 July 2005

    Trade mark: INTUITA

     („the trade mark‟)

Services specifications:

    Class: 35 Business management, consultancy, organisation and advisory

    services; business organisation and management consulting, evaluation of

    business affairs, business appraisal services business research, business

    information services, event management services, accounting services,

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    business appraisals, cost price analysis services, marketing and business

    development of inventions, lobbying services, organisation of trade fairs,

    personnel management and consultancy services, human resource

    management services, administration of oil and gas leases, provision of

    information in relation to aforementioned services including via a global

    computer network.

    Class: 36 Financial services in this class, including (but not limited to)

    capital investment and financial management services; commercial

    finance and loans, short term money lending, advisory services in relation

    to commercial financial matters and commercial trust administration

    services, lending against security loan services; investment advice;

    infrastructure investment services; financial analysis brokerage for SME

    investments; capital investments; charitable fund raising services; real

    estate evaluation; provision of information in relation to the

    aforementioned services, including via global computer network.

    3. The trade mark was accepted for possible registration and advertised for opposition purposes on 17 November 2005. Intuit Inc. („the opponent) then filed a Notice of

    Opposition under section 52 of the Trade Mark Act 1995 („the Act‟), opposing the

    registration of the trade mark.

    4. The parties served and filed evidence in accordance with the Trade Mark Regulations

    1995.

    5. The opponent asked to be heard and the matter came before me, Debrett Lyons, as a delegate of the Registrar of Trade Marks, in Brisbane on 2 September 2008. The applicant was represented by Colin Lagoon and Steven Barnes, both directors of the applicant company. The opponent was represented by Trevor Stevens, solicitor and trade mark attorney, of Davies Collison Cave.

    Notice of Opposition

    6. The Notice of Opposition cites every ground of opposition available to the opponent under the Act however at the hearing Mr Stevens only pressed those grounds of opposition under section 44 (conflicting trade mark), section 59 (no intention to use the trade mark); section 60 (prior trade mark with a reputation) and section 62 (trade mark accepted on the basis of evidence or representations that were false in material particulars).

    7. For the sake of completeness, I treat the remaining grounds listed in the Notice of Opposition as having not been established.

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    The Evidence

    8. The written evidence in support of the opposition consists of material that I will not list exhaustively. In what follows I will discuss those parts of it that are relevant.

    9. Colin Lagoon declares to being a co-founder and director of the applicant. By way of background, Mr Lagoon introduces himself in his declaration by stating the he has had 16 years‟ experience in the personnel recruitment, human resource management and consultancy industries. He goes on to declare that the applicant specialises in recruitment and human resource management.

    10. He states that he is authorised [by the applicant] to make his declaration, which is based on his “own knowledge or from knowledge obtained from examining books and

    records of the applicant”. Mr Lagoon declares that the applicant company was

    incorporated on 12 August 2004. The first difficulty with Mr Lagoon‟s evidence is

    that he also states that “the applicant has traded under the name INTUITA since late

    2003”, clearly a legal impossibility. Mr Lagoon goes on to explain that “the name INTUITA was the result of a brainstorming session held by the Directors of the Applicant and a graphic designer, Dan Smareglia, of Tempo Advertising”. Once

    more, if the trade mark had been used since late 2003 as claimed, then the brainstorming session could not have included the directors of the, then unformed, applicant company. I assume that what Mr Lagoon meant was that the meeting was between Mr Smareglia and those individuals who would later be appointed as directors of the applicant when it was incorporated. This assumption may seem pedantic, but so it needs to be in order to properly assess the opponent‟s complaint in

    this case.

    11. Daniel Smareglia has given evidence that he is a director and co-owner of Tempo Advertising and that:

    [I] first met representatives of the Applicant on Wednesday, 22 October

    2003. The representatives were:

    ; Colin Lagoon

    ; Steven Barnes

    ; Greame Gallanty

    ; Mark Nicol; and

    ; Philip Garland.

    During the meeting I received a brief from the representatives of the

    Applicant and I spoke about ideas for a business name, about a logo

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    concept and also about a corporate identity design. I then supplied Colin

    Lagoon with a list of business name options for the representatives to

    consider.

    Following on from that initial meeting, the representatives of the

    Applicant brainstormed further ideas for the business name and spoke to

    me by phone to ask my opinion on each of the shortlisted names.

    I recommended that they choose INTUITA as a business name….

    Once the name INTUITA had been selected, I was commissioned to print

    business cards and stationary (spelling). The printing was completed by

    the beginning of December 2003.

    12. The evidence of first use of the trade mark is an advertisement for a senior manager‟s role in Queensland. There is no indication of the date of the advertisement but there is a handwritten annotation, “March 2004”. The contact person for applications for the job is Colin Lagoon. The advertiser is Lagoon Corporate Services Pty Ltd. The trade mark appears in the advertisement adjacent that company name and together with a strapline which states: “Proudly part of the Intuita Group”, suggesting that Lagoon Corporate Services Pty Ltd was part of that group. A number of later advertisements follow the same pattern however what is noteworthy is that there is use of the trade mark by, or links between the trade mark and, entities including Intuita Recruitment and Intuita Smart People, one or other sometimes described as a

    division of Lagoon Corporate Services Pty Ltd. Mr Lagoon also exhibited a flyer

    entitled „About INTUITA‟ from 23 November 2004 distributed at a Queensland

    „Business Leaders Forum‟ where the business is described as having three distinct areas of expertise - INTUITA Smart People, for which the contact person is Mr Lagoon; INTUITA Smart Business, for which the contact person is Graeme Gallanty; and INTUITA Smart Technology, for which the contact person is Mr Barnes.

    13. Based on this much of the evidence I can make the following preliminary findings: ; The evidence is not clear as to who actually coined the trade mark all it supports

    is the finding that the trade mark was coined through the co-operative efforts of

    Messrs Lagoon, Barnes, Gallanty, Nicol, Garland and Smareglia.

    ; The evidence is not complete, however it would appear that each of Messrs

    Lagoon, Barnes, Gallanty, Nicol and Garland had their own separate businesses

    and came together for the purpose of establishing a new business under the trade

    mark.

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    ; The evidence shows first use of the trade mark in commerce in March 2004. That

    use was not by the applicant (which had yet to be incorporated) and was not by the

    original applicant.

    ; Up to and including the day on which the application was filed, the trade mark

    was used by a number of entities, some incorporated, some seemingly not, but

    none being the original applicant.

    ; At it highest, it could be said that those entities were acting as a loose alliance,

    using the trade mark in common.

    Reasoning

     Onus

    14. The opponent bears the onus of establishing its grounds of opposition. The opposition will succeed if one of those grounds is established. The standard of proof is the balance of probabilities (Blount v Registrar of Trade Mark (1998) 83 FCR 50; Rejfek

    v McElroy (1965) 112 CLR 517 at 521).

     Section 59

    15. In my assessment, the applicant faces its most serious challenge to registration under the section 59 ground pressed by the opponent and for that reason I have approached it first. Section 59 states:

     Applicant not intending to use trade mark

     The registration of a trade mark may be opposed on the ground that the

    applicant does not intend:

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

     (b) to assign the trade mark to a body corporate for use by the body

    corporate in Australia;

    in relation to the goods and/or services specified in the application. 16. At the hearing, the applicant‟s representatives expressed surprise that there could be any question that the applicant did not intent to use the trade mark. I found Mr Barnes and Mr Lagoon to be both articulate in their submissions and honest in their factual accounts of events. No doubt both are astute businessmen. Nonetheless, in common with much legislation, the Trade Marks Act carries pitfalls and I was distressed to see

    that the applicant had encountered one of them.

    17. If I have correctly understood the applicant‟s account of events, had the trade mark

    application been filed in early 2004, broadly contemporaneously with the inception of the business but before the applicant was incorporated, then there is some cause to

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    think that the trade mark might have been filed under the provisions of section 28 which states:

     Application by joint owners

     If the relations between 2 or more persons interested in a trade mark are such

    that none of them is entitled to use the trade mark except:

     (a) on behalf of all of them; or

     (b) in relation to goods and/or services with which all of them are

    connected in the course of trade;

    the persons may together apply for its registration under subsection 27(1).

    18. However, Mr Lagoon explains his declaration that:

    The Application was first filed in the name of Advanced Technology

    Environment Control Pty Ltd, a company with which many of the

    directors of the Applicant were associated. Some time after, it was

    decided that it would be more appropriate to have the Application in the

    name of the Applicant and the Application was assigned accordingly.

    19. There are complexities to that statement. The application was filed nearly a year after the incorporation of the applicant and yet, for reasons left unexplained in the evidence or at the hearing, the application was not filed in the name of the applicant. Instead, it was filed in the name of a company whose name is not linked in any of the evidence to use of the trade mark at any point between March 2004 and July 2005. Equally unsettling is the statement that this was a company with whom many of the directors of the applicant were associated. The opponent‟s attorney, Mr Stevens, gave relevant

    evidence. Exhibited to his declaration is an ASIC Company Extract for the original applicant. It was incorporated in 1999. Its five directors were all appointed before the filing date of the trade mark application and indeed before the first use of the trade mark. It appears to be a family company since all directors bear the one surname, Stoltz.

    20. ASIC records for the original applicant do not connect it in any way with Messrs Lagoon, Barnes, Gallanty, Nicol or Garland. None are directors or other office holders of the company. If there was a connection between any of those gentlemen and the original applicant, it was not as an officer of that company. Amongst other things, that means that any decision taken by one or more of them could not bind that company or, to put it in other words more pertinent to the section 59 ground of objection, speak for the intentions of the company.

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    21. I note that there were no directors of the original applicant at the 22 October, 2003 “brainstorming” meeting. There is no evidence of any of the directors of the original applicant having been involved in the subsequent choice of the trade mark. Aside from Mr Lagoon‟s statement, the later act of filing the trade mark application, carrying with it the claim to be the owner of the trade mark, is therefore unexplained.

    22. By a deed dated 1 January 2006, the application was assigned to the applicant. The deed was filed with the Trade Marks Office on 10 February 2006. Recordal of the assignment took place on 14 February 2006. I take notice of section 108(2) which states:

     On and after the day on which the Registrar records the particulars of the

    assignment or transmission, the person to whom the trade mark has been

    assigned or transmitted is taken, for the purposes of this Act, to be the

    applicant for the registration of the trade mark,

and of section 6 which defines:

     applicant, in relation to an application, means the person in whose name the

    application is for the time being proceeding.

    23. Accordingly, for the purposes of section 59, „the applicant‟ was Advanced

    Technology Environment Control Pty Ltd up to 13 February 2006, after which „the

    applicant‟ became Intuita Pty Ltd. Under section 59, the intention to use a trade mark has been held to be an ongoing intention (see McDonald’s Corporation v McBratney

    Services Pty Ltd [2006] ATMO 71 (2 August 2006); Americana International Ltd v

    Suyen Corporation (2008) 75 IPR 596). Therefore the legislative demand for an intention to use the trade mark is not limited to Intuita‟s intention, but also places that

    requirement on the original applicant.

    24. Section 59 is tied with section 27, which states:

    Applicationhow made

     (1) A person may apply for the registration of a trade mark in respect of

    goods and/or services if:

     (a) the person claims to be the owner of the trade mark; and

     (b) one of the following applies:

     (i) the person is using or intends to use the trade mark in relation

    to the goods and/or services;

     (ii) the person has authorised or intends to authorise another person

    to use the trade mark in relation to the goods and/or services;

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     the person intends to assign the trade mark to a body corporate that is about to

    be constituted with a view to the use by the body corporate of the trade mark

    in relation to the goods and/or services.

    25. Putting out of my mind any doubts which might arise as to whether a company by the name of Advanced Technology Environment Control Pty Ltd would have an intention to use a trade mark in relation to the service industry business as previously described by Mr Lagoon and basing my decision on the whole of the evidence, I cannot see how the original applicant could in any manner be said to be the owner of the trade mark in satisfaction of section 27(1)(a). Nor, based on the evidence, can I perceive any intention by the original applicant to use the trade mark in satisfaction of section 27(b)(i). Neither can I detect any plan that the original applicant authorized or intended to authorize another person (including a body corporate) to use the trade mark since there is no evidence supporting a connection between the original applicant and the other users of the trade mark. Finally, the facts do not support any claim that the original applicant intended to assign the trade mark to a body corporate that was, in July 2005, about to be incorporated (the current applicant having been incorporated some 11 months earlier).

    26. For these reasons I find that the original applicant had no intention to use the trade mark and so the section 59 ground of opposition has been established.

    27. Finally, I would observe that, as in the case of Crazy Ron’s Communications Pty

    Limited v Mobileworld Communications Pty Limited [2004] FCAFC 196, this is an

    application that was fatally flawed from the beginning. In that case the Full Federal Court said, of the amendment provisions of section 65:

    we do not think that s 65(5) is intended to permit the substitution of one

    person for another as an applicant simply because the first person

    „mistakenly‟ applied for registration of a trade mark, whatever may have

    been the error or misunderstanding that led to the mistake. Section 65(5)

    should not be construed as permitting to be done by mere amendment of

    an application what should be done by withdrawal of the application and

    filing of another application. That is to say, the provision does not

    authorise the substitution of one person for another person as the applicant

    for registration.

    28. While I have sympathy for the position of the applicant, I believe that the assignment of a wrongly-filed, and thus flawed, application should not have been used to effect the same substitution.

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    Decision

    29. Section 55 states that:

    Unless the proceedings are discontinued or dismissed, the Registrar must, at

    the end, decide:

    (a) to refuse to register the trade mark; or

    (b) to register the trade mark (with or without conditions or

    limitations) in respect of the goods and/or services then specified in

    the application; having regard to the extent (if any) to which any

    ground on which the application was opposed has been established.

    Note: For limitations see section 6.

    30. The opposition succeeds since at least a ground of opposition has been established. I therefore direct that the application be refused one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that refusal shall not occur until a court so directs.

    Costs

    31. I order that the applicant pay the opponent‟s costs according to the official scale.

Debrett Lyons

    Hearing Officer

    Trade Marks Hearings

    12 December 2008

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