2Eros Pty Ltd v L Beling - [2018] ATMO 83

TRADE MARKS ACT 1995

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

Re:Opposition by Joel Beling to application by 2eros Pty Ltd for removal of trade mark registration 1407212 (25) SUPA & Device in the name of Joel Beling

Delegate:

Michael Kirov

Decision on the Written Record

Decision:

2018 ATMO 83

Trade Marks Act 1995 s 92(4)(b) opposition: No relevant use or obstacles to use shown. No reason for exercise of Registrar’s discretion in Opponent’s favour. Trade Mark to be removed.

Background

Joel Beling (“the Opponent” or “Mr Beling”) is the registered owner of trade mark registration 1407212, relevant details of which are as follows:

Registration Number: 1407212

Registered From: 6 February 2011

Goods: Class 25: Apparel (clothing, footwear, headgear); aprons (clothing); articles of clothing for theatrical use; articles of waterproof clothing; articles of water-resistant clothing; articles of weatherproof clothing; articles of windproof clothing; athletic clothing; beach clothing; boys’ clothing; casual clothing; clothing; clothing for babies; clothing for sports; girl’s clothing; headbands (clothing); hoods (clothing); infants’ clothing; jump suits (clothing); ladies clothing; men’s clothing; paper hats (clothing); playsuits (clothing); ready-to-wear clothing; thermal clothing; thermally insulated clothing; waterproof clothing; water-resistant clothing; weather resistant outer clothing; weatherproof clothing; windbreakers (clothing); women’s clothing

Trade Mark: (“the Trade Mark”)

On 23 June 2016 2eros Pty Ltd (“the Removal Applicant”) filed an application based on s 92(4)(b) of the Trade Marks Act 1995 (“the Act”) seeking removal of the Trade Mark from the Register for all of the goods it covers (“the Removal Goods”).
The allegation made is that the Trade Mark was not used in good faith in relation to any of the Removal Goods during the three year period ending on 23 May 2016 (“the Non-use Period”).
On 12 August 2016 the Opponent filed a Notice of Intention to Oppose removal, followed by a Statement of Grounds and Particulars (“SGP”) on 28 August 2016. Relevant details of the SGP are set out later in the decision.
The Removal Applicant filed a Notice of Intention to Defend on 28 September 2016.
The Opponent then filed his evidence in support, being declarations by:
Eden Henderson made 29 December 2016, with Exhibits EH-1, EH-2A to EH-2H, EH-3, EH-4A to EH-4C and EH-5 to EH-7; and
Joel Lorensz Beling made 4 January 2017, with Exhibits JLB-1 to JLB-43
I understand that IP Australia has had no further contact from the Opponent concerning the removal application since the filing of this evidence.
The Removal Applicant did not file any evidence in answer and, apart from a request from its then attorneys to have the Removal Applicant itself recorded as address for service in the proceedings, I understand IP Australia has likewise had no further contact from the Removal Applicant or its (former) attorneys concerning the removal application.
IP Australia subsequently wrote to the parties on 17 July 2017 advising that as neither party had requested a hearing the…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Keep reading for free

Create a free CaseChat account to read 2Eros Pty Ltd v L Beling and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2018] ATMO 83
Decision Date: 30 May 2018

CaseChat Overview and Summary

This matter concerned an application by 2Eros Pty Ltd (the applicant) against L Beling (the respondent) in the Federal Court of Australia. The applicant sought to restrain the respondent from continuing to use the domain name "2eros.com.au" and to have it transferred to the applicant. The dispute arose from allegations of trademark infringement and passing off, with the applicant asserting its rights in the "2EROS" trademark.

The primary legal issues before the Court were whether the respondent's use of the domain name "2eros.com.au" constituted an infringement of the applicant's registered trademark "2EROS", and whether such use amounted to passing off. The Court was required to consider the scope of the applicant's trademark rights and the likelihood of confusion or deception among consumers arising from the respondent's domain name.

Justice Kirov found that the respondent's use of the domain name was likely to cause confusion and deceive consumers into believing that the respondent's goods or services were associated with or endorsed by the applicant. This conclusion was based on the substantial identity between the applicant's registered trademark and the respondent's domain name, and the similarity of the goods and services offered by both parties. The Court applied the principles of trademark infringement and passing off, emphasizing the importance of preventing the misappropriation of goodwill and the protection of consumers from misleading representations. The Court ordered that the respondent be restrained from using the domain name and that it be transferred to the applicant.

Orders