Hungry Spirit Pty Limited ATF The Hungry Spirt Trust v Fit n Fast Australia Pty Ltd

1. The appeal from the decision of the delegate of the Registrar of Trade Marks given on 18 February 2020 in relation to Australian trade mark registration number 1242423 be allowed.
2. The decision of the delegate be set aside.
3. The Registrar allow Australian trade mark registration number 1242423 to remain registered for all goods and services originally covered by the registration.
4. There be no order as to costs.
5. The appellant is directed to provide these Orders to the Registrar forthwith. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

BURLEY J: 1 In these proceedings the appellant (Hungry Spirit) appeals from a decision of a delegate of the Registrar of Trade Marks with respect to its trade mark "MOVE", No. 1242423: Hungry Spirit Pty Ltd as Trustee for The Hungry Spirit Trust v Fit n Fast Australia Pty Limited [2020] ATMO 24. Before the delegate, the respondent (Fit n Fast) sought, pursuant to s 92(4)(b) of the Trade Marks Act 1995 (Cth), that the trade mark be removed from the Register of Trade Marks on non-use grounds. Hungry Spirit opposed that application pursuant to s 96 of the Act, and the parties filed evidence and conducted a hearing before the delegate. 2 On 18 February 2020, the delegate refused to remove the trade mark from the Register, but directed that the trade mark's specification of goods and services for classes 9, 16 and 41 be amended as below (underlined passages added by the delegate): Class 9: Training manuals in electronic format; computer programs relating to the training of personnel; training guides in electronic format; training manuals in electronic format; all the foregoing being in relation to training in manual handling, injury prevention and management, risk and change management, leadership, health, wellbeing and biomechanical fitness in the workplace. Class 16: Booklets for use in conducting training workshops; booklets for use in conducting training workshops; manuals for business training courses; printed training guides; training booklets; training guides in the form of printed matter; training manuals in the form of printed matte; all the foregoing being in relation to training in manual handling, injury prevention and management, risk and change management, leadership, health, wellbeing and biomechanical fitness in the workplace. Class 41: Adult training; conducting training seminars; conducting workshops (training); practical training (demonstration); providing courses of training; staff training services; training; adult training; arranging and conducting of workshops (training); provision of training; provision of training courses; technical training; all the foregoing being in relation to training in manual handling, injury prevention and management, risk and change management, leadership, health, wellbeing and biomechanical fitness in the workplace. 3 On 10 March 2020 Hungry Spirit filed a Notice of Appeal in this Court, seeking that the delegate's decision be set aside. The proceeding is a hearing de novo of the non-use application: Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; 176 FCR 300 at [65]. 4 Prior to the first case management hearing in these proceedings, the parties informed the Court that the matter had been settled. They asked the Court to make consent orders providing that the appeal be allowed, the decision of the delegate be set aside, and that the Registrar allow the trade mark to remain registered for all goods and services originally covered by the registration, without the limitations represented by the underlined passages set out above. The parties also provided a letter from IP Australia, which states that the Registrar has no objection in principle to the orders sought by the parties, provided that Fit n Fast gives its written agreement. At my request, Hungry Spirit filed submissions in support of the orders sought. 5 In Hungry Spirit Pty Ltd ATF The Hungry Spirit Trust v Fit n Fast Australia Pty Ltd [2019] FCA 1277 (Hungry Spirit 1), the parties to an appeal brought pursuant to s 56 of the Act from a decision of a delegate of the Registrar sought by consent to set aside orders adverse to the trade mark applicant. In that case, which involved the same parties but different trade marks, the trade marks were accepted for registration by the Registrar, but Fit n Fast successfully opposed the registrations on grounds set out in Part 5, Division 2 of the Act. Hungry Spirit appealed the decision. Fit n Fast elected not to become involved in the appeal. As Fit n Fast bore the onus to establish the grounds of opposition, it was the effective moving party in the appeal. In the absence of a moving party, and having regard to the fact that the Registrar did not wish to be heard on the appeal, I ordered that the appeal be allowed and the Registrar allow the trade marks to proceed to registration, there being no self-evident reason why registration should not be permitted. Orders to similar effect have been made in a number of decisions, some of which I referred to in Hungry Spirit 1 at [3]. 6 The legislative scheme for the removal of trade marks for non-use is somewhat different to the scheme for the acceptance and registration of trade marks. It is accordingly necessary to consider afresh whether or not it is appropriate for the Court to make orders by consent setting aside a decision of the delegate. 7 Part 9 of the Act provides that an application may be made for the removal of a trade mark from the Register for non-use: s 92. In the present case the trade mark was registered effective from 30 May 2008. A non-use application was filed by Fit n Fast pursuant to s 92(4)(b), on the basis that the trade mark had remained registered for a continuous period of three years ending one month before the day on which the non-use application was filed, and at no time during that period did the owner use the trade mark in Australia, or make good faith use of the mark in Australia, in relation to the goods and services to which the application relates. 8 The Registrar is obliged to give notice of an application under 92, including by advertising the application in the Official Journal: s 95. The application for removal may be referred by the Registrar to a prescribed court for determination: s 94. That step was not taken in this case. Any person may oppose an application for removal by filing a notice of opposition with the Registrar in accordance with the regulations and within the prescribed period: s 96. If the application for removal is unopposed, or the opposition has been dismissed, the Registrar (or the court, if the application is referred to it) must remove the trade mark from the Register in respect of the goods and/or services specified in the application: s 97. If the application is opposed, the registrar must deal with the opposition in accordance with the regulations: s 99. The Trade Marks Regulations 1995 (Cth) provide that the applicant must file a notice of intention to defend the application, if a notice of intention to oppose the application is filed: reg 9.15. If a notice of intention to defend is not filed within the period required, the Registrar may decide to take the opposition to have succeeded, and refuse to remove the trade mark from the Register: reg 9.15(3). 9 Section 100(1) provides that it is for the trade mark owner (as the opponent to the non-use application) to rebut any allegation that the trade mark has not been used or was not intended to be used. 10 Section 101(1) provides that if the proceedings have not been discontinued or dismissed, and the Registrar is satisfied that the ground 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. Section 101(2) similarly provides that if, at the end of the proceedings relating to the opposed application the court is satisfied that the grounds on which the application was made have been established the court may order the Registrar to remove the trade mark from the register in respect of all or some of the goods or services to which the application relates. However, the Registrar (or the court) may elect not to effect any removal if she (or the court) is satisfied that it is reasonable to decline to do so: s 101(3), (4). 11 If the application is determined by the Registrar (or her delegate) an appeal lies to this Court or the Federal Circuit Court from the decision: s 104. It is by that route that the present appeal is before the Court. As a hearing de novo, the Court stands in the shoes of the Registrar to consider afresh whether or not the non-use application should be allowed. Accordingly, although in its submissions Hungry Spirit drew specific attention to s 101(2), it is the language of s 101(1) that is directly applicable. 12 Despite the obvious differences between the operation of Part 5, Division 2 of the Act (concerning opposition to the registration of a trade mark application), and Part 9 (concerning non-use), in my view it is appropriate in the present case to make orders reversing the decision of the delegate, even though I have conducted no hearing of the appeal on its merits. 13 As a hearing de novo, the Court considers the application for removal brought pursuant to s 92 afresh. The use of the word "appeal" in s 56 and in s 104 does not confer appellate jurisdiction upon the Court. The Court approaches the matter for the first time exercising the judicial power of the Commonwealth, not in order to decide whether the delegate as an executive decision maker was right or wrong, or otherwise to correct error in the executive decision, but to deal with a subject matter, a controversy, for the first time: New England Biolabs Inc v F Hoffmann-La Roche AG [2004] FCAFC 213; 141 FCR 1; 62 IPR 510 at [44] (Kiefel, Allsop (as their Honours then were) and Crennan JJ); Woolworths Ltd v BP PLC (No 2) [2006] FCAFC 132; 154 FLR 97; 235 ALR 698; 70 IPR 25 at [137] (Heerey, Allsop (as his Honour then was) and Young JJ); Bauer Consumer Media Ltd v Evergreen Television Pty Ltd [2019] FCAFC 71; 367 ALR 393 (Burley J at [228], Greenwood J agreeing generally at [18]). 14 The Act and Regulations make clear that it is the applicant for removal that remains the moving party, despite the fact the appeal was initiated by Hungry Spirit and despite the reversal of onus effected by s 100. In this regard it is significant that the applicant is obliged to file a notice of intention to defend. If it does not do so, then the opposition may be taken to have succeeded and the removal application will fail. Whilst Hungry Spirit was obliged to file a notice of appeal in this Court, because it did not succeed before the delegate, the substantive moving party in the proceeding remained Fit n Fast, as the applicant for removal. 15 Further, s 101(1) requires the Registrar to be satisfied that the grounds upon which the non-use application was made have been established. Accordingly, despite the reversal of onus, ultimately it is for the applicant for removal to persuade the Registrar of the appropriateness of any order made. 16 In these circumstances, it is apparent that despite the different scheme set out in the Act and Regulations, the application for non-use must be initiated and prosecuted by the non-use applicant. The position is analogous to that which I considered in Hungry Spirit 1. 17 In the present case, Fit n Fast and Hungry Spirit have reached a compromise, with the consequence that Fit n Fast no longer wishes to prosecute its application for non-use. Hungry Spirit maintains its opposition to the non-use application. Were that to have been the position before the delegate of the Registrar, she could pursuant to reg 9.15 have moved, in effect, to dismiss the application for non-use. Having been notified of the parties' position, the Registrar does not oppose the orders sought, which will remove the limitation placed on the designation of goods and services. Furthermore, having regard to my consideration of the reasons given by the delegate, I can see no self-evident reason why, in these circumstances, the orders should not be made. I certify that the preceding seventeen (17) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Burley.