TRADE MARKS ACT 1995

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

Re: Opposition by Phillip Ryan to application under section 92 of the Act by Racing & Wagering Western Australia to remove trade mark number 1017163(41) - PLAYER PROTECTION KEY - in the name of Phillip Ryan

Non-use Applicant: Paul Fong and Leanne Oitmaa of Watermark Patent and Trade Mark Attorneys

2011 ATMO 64

S96: opposition to application for removal for non-use - difference between provision of goods and provision of services - whether claimed use relates to goods or services - no use or intent to use demonstrated for services claimed - registration to be removed - costs awarded against trade mark owner.

1. Phillip Ryan registered a trade mark under the provisions of the Trade Marks Act 1995 ('the Act'), current details of which are shown here:

Services/class: Class 41: Gaming, entertainment, online game services, lotteries, operating lotteries, casino facilities for gambling

1. On 15 February 2010 Racing and Wagering Western Australia ('the non-use applicant') applied under the provisions of section 92 of the Act to remove the trade mark from the Register for all the services for which it is registered.
2. Mr Ryan filed a notice of opposition to the non-use application on 11 June 2010. He served and filed evidence in support on 9 September 2010.
3. On 9 December 2010, the non-use applicant advised that it would not be serving and filing any evidence in answer. It then applied to be heard.
4. I heard the matter as a delegate of the Registrar of Trade Marks in Canberra on 6 July 2011. The non-use applicant was represented by Paul Fong and Leanne Oitmaa of Watermark Patent and Trade Mark Attorneys of Perth who appeared by telephone conference. Mr Ryan did not appear but provided written submissions.

1. The evidence in support consists of the declaration of Phillip James Ryan, made on 8 September 2010 and accompanied by Exhibits PR-1 to PR-6.
2. Mr Ryan states that he is chairman and chief executive officer of Responsible Gaming Networks Pty Ltd, a company incorporated in 2009 and which has been authorised by Mr Ryan to use the trade mark. He states that the trade mark refers to a player pre-commitment technology for use in the gambling industry. He describes his services as follows:

...the service involves the provision and employment of the unique device to identify and eliminate problem gamblers from poker machines, other casino gaming, online gaming and gambling, wagering and lotteries. Consequently the service we provide under the trade mark is in connection with the full range of gambling, gaming and betting services.

The essence of our technology is as follows - the device is provided to all players who must first register with the gaming or gambling provider. At registration all players must designate their monetary loss limit and time duration of gaming limit over specified durations of gaming, i.e. daily, weekly, monthly and annually. When players exceed their pre-designated limits the networks will not allow them to lose any more money nor play any longer until a new period of time begins and/or until professional counsellors believe it to be appropriate.

As such the service offers financial protection and addictive gambling behaviour protection for all players across all ranges of gaming, gambling, betting, lotteries and games of chance, and other similar forms of entertainment.

1. The exhibits to Mr Ryan's declaration provide examples of customer presentations he has given in Australia and overseas; various examples of correspondence with a variety of private companies, federal and state public servants and state and federal ministers as well as some media releases and newspaper articles. He states that

After over six years of constant marketing and promotion of our technology and service in Australia and overseas under the trade mark, we are close to commercial deployment of the service with the imminent deregulation and tendering of new contracts for gaming services in Victoria and other states of Australia, and more recently with the Prime Minister's recent commitment to deploy "new pre-commitment" technology across Australia beginning in 2012.

1. The non-use application has been filed nominating both paragraphs 92(4)(a) and 92(4)(b) of the Act which provide:

(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:

(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:

(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:

(ii) used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.

1. Section 100 places the burden of establishing appropriate use of, or intention to use, the impugned trade mark upon the opponent and relevantly provides:

(1) In any proceedings relating to an opposed application, it is for the opponent to rebut:

(a) any allegation made under paragraph 92(4)(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:

(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 opposed application relates (relevant goods and/or services); or

(b) any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services; .

(2) For the purposes of paragraph 1(b), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time before the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

(a) the opponent has established that the trade mark or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services before that period; or

(b) in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

(i) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee in relation to those goods or services before that period and that that use was in accordance with the terms of the assignment; and

(ii) the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee before that period as having been a use of the trade mark in relation to those goods or services by the registered owner.

1. Section 101 refers to determination of an opposed application, and allows the Registrar some discretion in deciding whether the trade mark should removed from or allowed to remain on the Register. I will come back to section 101 later in this decision.

1. In order to prevent his trade mark being removed from the Register, the onus is on Mr Ryan to demonstrate that he has used it in respect of the services for which it is registered, or indeed had an intention to use it at the filing date. Section 100(1)(a) of the Act provides that Mr Ryan bears the onus of rebutting the allegations made against him under paragraph 92(4)(a), which he may do by, inter alia, establishing that the trade mark, (or, per section 100(2)(a), the trade mark with additions or alterations not substantially affecting its identity), was used in good faith during the relevant period. I proceed on the basis that the relevant standard of proof is on the balance of probabilities.
2. The use that Mr Ryan demonstrates 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."
3. The matters for consideration in this case are:
   • whether Mr Ryan had, at the time he filed his application, any intention to use the trade mark for the range of gambling services for which it is registered, and
   • whether any use has occurred in respect of those services during the time period ending one month before the non-use application was filed. which for the purposes of paragraph 92(4)(b) specifically relates to the three year period ending on that date.
4. The non-use applicant submits that neither the intention to use the trade mark nor any actual use has been demonstrated in respect of the relevant services. It submitted that the evidence Mr Ryan has provided demonstrates that the trade mark is to be used in respect of a physical device, namely a USB device, which it says should more properly be covered by registration in class 9.
5. Mr Ryan rejects these submissions in the following words (I have omitted portions of the submissions which are arguably libellous and have no bearing in the matter at hand):

There also appears to be a mistaken belief that our PLAYER PROTECTION KEY is a physical good and as such should be classified as a Class 9 electronic good.

Our PLAYER PROTECTION KEY consists of a combination of highly sophisticated software, artificial intelligence of a proprietary and patented nature, encryption engines, and a USB key, in order to create a unique service. Collectively, the PLAYER PROTECTION KEY offers a service to gamblers and governments such that it:

• Can be used by players to self select their own money and time limits for gambling across multiple poker machines and multiple venues or multiple internet gambling sites;
• Can only be used by its allocated owner (and therefore cannot be shared with other players);
• Can only be used by people aged over 18 years (and therefore cannot be used by underage gamblers); and
• Cannot be used by players who have self-excluded themselves for a specific period of time they designate due to their self-defined problem gambling addictions.

All of the above services are undertaken automatically without the need for any third party intervention or supervision.

1. Mr Ryan then goes on to describe what goods are - that is, "items which you can see and touch, such as a book, a pen, salt, shoes, hats, a folder etc". He says that 'services' "are provided for you by other people, such as: a doctor, a lawn mower worker, a dentist, haircut and eating in restaurants". He suggested, however, "the proposition that the dichotomy between physical goods and intangible services should not in our view be given too much credence as they are not discrete categories".
2. Mr Ryan is largely correct in his definitions of goods and services. Indeed, goods are products, such as USB sticks or software provided on a CD. Services are activities performed in the course of trade for the benefit of someone else, such as the provision of gambling machines in a club for the use of patrons so they can gamble, or the provision of facilities on-line to enable people to gamble. Where Mr Ryan is mistaken is in exactly what it is that he is offering in trade and the fact that goods and services are indeed different things.
3. In the Woolworths Metro decision[1], Justice French said (at paragraph 37) when discussing the matter of closely related goods and services:

The concept of "closely related goods" in respect of a service mark was introduced into the 1955 Act by the 1978 amendments. It was not defined in the 1955 Act nor is it defined in the 1995 Act. It is also used in subs 44(1) to prevent registration of a trade mark in respect of goods which is substantially identical with or deceptively similar to a registered or priority trade mark in respect of "similar goods or closely related services". The term "closely related" recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word "similar" does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as 'closely related'. (My emphasis.)

1. It is clear from the evidence put before me that Mr Ryan does not offer, nor is there any indication that he ever intended to offer, the gambling services for which he has registered his trade mark. There is no indication that he intended to set up a casino; set up on-line gambling facilities; provide poker machines in a hotel or club; provide for the operation of lotteries or provide any kind of entertainment services. What he has been advertising is a USB device which can be used within the gambling services industry in an attempt to control problem gamblers.
2. Mr Ryan could be said to be offering a service of benefit to problem gamblers who are unable to control their own gambling behaviour in that the device he provides is designed to restrict and hopefully alleviate the results of their uncontrollable behaviour. However, he is doing this by the provision of an electronic device, not by the provision of a gambling service. As far as the trade mark legislation is concerned that device is correctly classified in class 9. He intends to provide a physical item, a good not a service. He has simply registered his trade mark in the incorrect class for services which he does not provide and has, on the basis of the evidence before me, no intention to provide. This kind of error is, unfortunately, not uncommon in respect of applications for trade marks and is not always something which will be ascertained at the initial examination of an application.
3. I note here that as the registration is wrongly classified as being services rather than goods, and as the device which Mr Ryan intends to provide is clearly a 'good', he could not have had an intention to use the trade mark in relation to those services at the time the application was filed. Neither could he have demonstrated that he had used the trade mark in relation to those services, and indeed he has not done so.
4. Under these circumstances, the opposition fails in respect of the provisions of both paragraphs 92(4)(a) and 92(4)(b).

1. This brings me to the matter of the Registrar's discretion in determining this non-use action. Mr Ryan has contended that it is in the public interest for his trade mark to be retained upon the register because it involves pre-commitment technology which will assist problem gamblers. However, it is clear to me that he is completely mistaken about what is involved in the services for which he has registered his trade mark. The registration should not be retained on the Register when it is in no way relevant to the device which Mr Ryan intends to provide at some unspecified time in the future. There are no mitigating factors which could persuade me that it is appropriate to do anything other than remove the registration from the Register in its entirety.

1. I direct that registration number 1017163 be removed from the Register one month from the date of this decision. If the Registrar has been served with a notice of appeal before then, I direct that removal shall not occur until the appeal has been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.

1. The removal applicant is the successful party and is entitled to its costs. Accordingly, I award costs against Mr Ryan, as per Schedule 8 of the Regulations

[1] Registrar of Trade Marks v Woolworths Limited [1999] FCAFC 1020; (1999) 45 IPR 411