The Applicant makes a persuasive argument. There are significant weaknesses in the Opponent's evidence as it does not contain sufficient documentary material supporting many of the assertions in Srinivasan. For example, Srinivasan asserts that the Opponent has used its Trade Mark in Australia for all the Relevant Goods and Services. Considering the Opponent's evidence, I am faced with an article contained in Tab 2 of Exhibit KR-1 accompanying Srinivasan. The article is dated 30 April 2018 and details that the Opponent was a food company and not just a recommendation engine and that the delivery of customized fresh prepared meals based on dietary advice had trialed in 2017 in the Bay Area but had been put on hold until the Opponent could develop a more scalable solution. This article is dated before the Relevant Period and itself confirms that the Opponent had ceased to offer food products to its customers by the Relevant Date. Additionally, it only goes so far as to suggest that these food products were only ever offered for a limited period in a small geographic area in the United States of America ('USA'). There is no additional material before me in the evidence which indicates that the Opponent ever offered or recommenced offering food products to its clients either in Australia or outside of the USA during the Relevant Period.
Srinivasan states that the Opponent is a personalised nutrition company that uses an at-home test to uncover details about a customer's genetics, lifestyle, metabolism and goals to design personalised food recommendations and nutritional counselling that are tailored specifically to the customer. The Opponent is also the registrant of the domain name habit.com and operates the webpage located at https://habit.com ('Opponent's Website').
Tab 1 of Exhibit KR-1 contains screen captures depicting the Opponent's Website captured from the 'Wayback Machine' on 19 October 2021 which is dated in the Relevant Period. These screen shots do demonstrate use of the Trade Mark in relation to an App which allows a customer to get a personalized nutrition plan based on their self-reported lab test values. The Applicant has argued that the Opponent's Website is not directed at the Australian consumer and that the use of a trade mark on a website in connection with an offer to provide goods or services will not be use in connection with the course of trade in those goods or services in Australia unless the website is specifically directed or targeted at Australia or there is evidence that the operator of the website has actually accepted orders from Australian consumers to provide the relevant goods or services.
I agree with the Applicant. The Opponent's evidence lacks quantitative dimensions such as quantum of revenue, invoices, App downloads in Australia or any advertising and promotional expenditure in Australia. Srinivasan states there were "59 clicks and 1,189 impressions from Australian users" to the Opponent's Website in the period from 13 November 2001 to 14 March 2023. However, no supporting documentation or substantiating evidence for these assertions is provided by the Opponent. What the Opponent's evidence does demonstrate is use of the Trade Mark within the USA. The third-party articles contained in Tabs 2 to 4 in Exhibit KR-1 accompanying Srinivasan confirm the Trade Mark's use at most in the USA.
The only mention in the evidence of the Opponent being active in Australia is contained in Confidential Exhibit KR-1 which is an internal document from 2020 when Viome Life Sciences. Inc acquired the Opponent. As confidentiality has been claimed in the document I state now, without detail, that the document at best makes a passing and generalized comment about the Opponent having customers in a number of countries with Australia included in that list. However, once again there is no documentation or substantiating evidence to support this general statement.
I am not satisfied that sufficient evidence has been provided to demonstrate genuine commercial use of the Trade Mark in relation to any of the Relevant Goods and Services within the Relevant Period in Australia, in accordance with the applicable tests. As such, I am not satisfied the Opponent has established use of the Trade Mark during the Relevant Period in Australia.
[2]
An Opponent to an application for removal may rebut an allegation of non-use by establishing that a failure to use the mark in the Relevant Period was 'because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period'. The circumstances must be 'an obstacle to the use of the trade mark by the registered owner'.[9]
The Opponent has claimed it has used the Trade Mark in Australia but that the COVID-19 pandemic was an obstacle to use stating:
[3]
Viome acquired the Opponent just before the COVID-19 pandemic and the pandemic created significant obstacles that slowed down the Opponent's ability to fully implement the Habit Brand Integration Plan, including during the Relevant Non-Use Period.
[4]
During the Relevant Non-Use Period, on 1 July 2020, 2 February 2021, and 15 November 2022, the Opponent had to undergo a reduction in employment as a result of unexpected and continuous supply chain problems. Specifically, the Opponent's workforce was reduced by more than 30%.
[5]
Additionally, given the nature of the Opponent's products (food-related and diagnostic), the Opponent was concerned with entering into new distributorship agreements while worldwide supply chain and health and safety issues related to the pandemic continued to develop.
[6]
In order to support these statements the Opponent referred me to Tabs 6 to 8 in Exhibit KR-1 accompanying Srinivasan which contain print outs of general information from the websites of the Reserve Bank of Australia and Parliament of Australia regarding the effects COVID-19 had on Australia and supply chains. There is nothing in the evidence before me which specifically demonstrates the Opponent had any intention or any plans of entering the Australian marketplace which were frustrated by the COVID-19 pandemic. Many businesses were impacted by COVID-19 but blanket statements about COVID-19 being an obstacle to use of the Trade Mark require more evidence than printouts of general information from third party websites. There must be a causal link between the COVID-19 pandemic and the Opponent's lack of use during the Relevant Period. The Opponent has not demonstrated this.
I am not satisfied that the Opponent has sufficiently demonstrated that there were any circumstances that were an obstacle to use pursuant to s 100(3)(c).
[7]
To exercise the discretion in s 101(3) I must be positively satisfied that, despite the lack of use or obstacles to use, it is reasonable to not remove the Trade Mark in respect of the Relevant Goods and Services.[10] The burden of persuasion falls in this regard falls on the Opponent.[11]
In coming to a decision, I refer to CUB Pty Ltd (formerly Fosters Australia Ltd) v Elixir Signature Pty Ltd[12], and the factors to be considered when making a decision whether or not to exercise of the Registrar's discretion were:
[8]
(a) There had been no abandonment of the trade mark;
[9]
(b) The registered proprietors of the mark still had a residual reputation in the mark;
[10]
(c) There had been sales by the registered proprietors for goods for which removal was sought since the relevant period ended;
[11]
(d) 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; and
[12]
(e) The registered proprietors were not aware of the applicant's sales under the mark.
[13]
While the Opponent has had its setbacks, I can confirm that the Opponent still passionately plans to pursue its ambitions around the world, including the launch of its Goods and Services under or by reference to the Trade Mark in Australia and New Zealand.
[14]
However, I am not persuaded by this bare statement. The Opponent's evidence is de minimis and demonstrates that the Opponent only ever offered food products for a short period of time in a small geographical area in the USA before the Relevant Period. There is no evidence that the Opponent had used its Trade Mark in Australia on any of the Relevant Goods and Services before, during or after the Relevant Period.
The Applicant submits that:
[15]
... while the Opponent claims that it has not abandoned the Trade Mark, and continues to maintain an intention to use the Trade Mark in Australia, there is no evidence of any attempt to implement the "... Plan", despite the easing of pandemic restrictions at the end of 2022 and the fact that many of the steps described in that plan could have been undertaken at any time. In those circumstances, the continuing absence of any evidence of use of the Trade Mark tells strongly against the exercise of the discretion. See Pioneer Computers Australia Pty Ltd v Pioneer KK[2009] FCA 135; (2009) 80 IPR 38 at [178].
[16]
I agree with the Applicant. The Opponent's evidence does not demonstrate any use in Australia or any substantiated efforts to commence use in Australia. I am cognisant of the public interest in the Register reflecting those trade marks which are in use and balancing the relevant considerations and noting all of the evidence before me, I am not satisfied it is reasonable to exercise the discretion not to remove the Trade Mark for any of the Relevant Goods and Services.
[17]
I am not satisfied that the trade mark of registration no. 1823751 has been used during the Relevant Period on all the Relevant Goods and Services. The Trade Mark will be removed from the Register.
[18]
The Applicant has been successful in relation to the application for removal of the Trade Mark and has requested its costs. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.
[19]
[1] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (sch 1, pt 3) as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.
[20]
[2]Pfizer Products Inc. v Karam[2006] FCA 1663 (Gyles J) and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd[2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52.
[6]Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).
[24]
[7] Act s 100(3)(a) and discussed in AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).