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

• Jurisdiction: Australia Federal only
• Judge: BURLEY J
• Judgment Date: 23 June 2020
• Neutral Citation: [2020] FCA 883
• Date: 23 June 2020
• Court: Federal Court

FEDERAL COURT OF AUSTRALIA

Hungry Spirit Pty Limited ATF The Hungry Spirt Trust v Fit n Fast Australia Pty Ltd [2020] FCA 883

File number:	NSD 260 of 2020
Judge:	BURLEY J
Date of judgment:	23 June 2020
Catchwords:	TRADE MARKS – appeal pursuant to s 104 of the Trade Marks Act 1995 (Cth) – where the parties have reached a settlement and the Registrar of Trade Marks does not oppose the orders sought – where there is no moving party on the appeal and no hearing on the merits of the appeal has been conducted – appeal allowed by consent
Legislation:	Trade Marks Act 1995 (Cth) s 44,s 56, s 92, s 94, s 95, s 96, s 97, s 99, s 100, s 101, s 104 Trade Marks Regulations 1995 (Cth) reg 9.15
Cases cited:	Bauer Consumer Media Ltd v Evergreen Television Pty Ltd [2019] FCAFC 71; 367 ALR 393 Hungry Spirit Pty Ltd ATF The Hungry Spirit Trust v Fit n Fast Australia Pty Ltd [2019] FCA 1277 Hungry Spirit Pty Ltd as Trustee for The Hungry Spirit Trust v Fit n Fast Australia Pty Limited [2020] ATMO 24 New England Biolabs Inc v F Hoffmann-La Roche AG [2004] FCAFC 213; 141 FCR 1; 62 IPR 510 Woolworths Ltd v BP PLC (No 2) [2006] FCAFC 132; 154 FLR 97; 235 ALR 698; 70 IPR 25
Date of last submissions:	10 June 2020
Registry:	New South Wales
Division:	General Division
National Practice Area:	Intellectual Property
Sub-area:	Trade Marks
Category:	Catchwords
Number of paragraphs:	17
Counsel for the Appellant:	Mr D. Larish
Solicitor for the Appellant:	Norton Rose Fulbright
Solicitor for the Respondent:	William Roberts Lawyers

ORDERS

		NSD 260 of 2020
BETWEEN:	HUNGRY SPIRIT PTY LIMITED ATF THE HUNGRY SPIRIT TRUST Appellant
AND:	FIT N FAST AUSTRALIA PTY LTD Respondent

JUDGE:	BURLEY J
DATE OF ORDER:	23 June 2020

THE COURT ORDERS THAT:

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.

REASONS FOR JUDGMENT

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...