Acaci Pty Ltd v UBreakIFix, Co - [2023] ATMO 101

TRADE MARKS ACT 1995

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

Re:Oppositions by ACACI PTY LTD to registration of trade mark application numbers 2090955 – UBREAKIFIX and 2090956 – UBREAKIFIX (Fancy) – both in classes 9, 35, 37 and 42 – in the name of UBreakIFix, Co.

Delegate:

Sheona Robertson

Representation:

Opponent: Not represented

Applicant: Marcus Fleming of Counsel, instructed by Davies Collison Cave Pty Ltd

Decision:

2023 ATMO 101

Trade Marks Act 1995 (Cth) – oppositions under section 52 – ground pursued under s 62A – ground not established – trade marks to proceed to registration

Background

This decision is in respect of oppositions under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by ACACI PTY LTD (‘Opponent’) to registration of the following trade marks (together ‘Trade Marks’):

Trade mark number	2090955	2090956
Trade mark	UBREAKIFIX	(‘Fancy Mark’)
Applicant	UBreakIFix, Co. (‘Applicant’)

Each of the Trade Marks was filed on 25 May 2020 and covering the same goods and services in classes 9, 35, 37 and 42. A convention priority date of 27 November 2019 is claimed in respect of some of the goods and services in classes 9, 35 and 37. See Annexure A for the full specification.
The Trade Marks were examined under s 31 of the Act, accepted for possible registration and advertised as accepted in the Australian Official Journal of Trade Marks on 11 November 2020.
The Opponent filed Notices of Intention to Oppose on 5 January 2021 followed by Statements of Grounds and Particulars (‘SGPs’) on 4 February 2021. The Applicant filed Notices of Intention to Defend on 12 May 2021.
The Opponent filed the following declarations as evidence in these oppositions:

Declaration of Sercan Acaci, Managing Director and owner of the Opponent, made on 11 August 2021;
Declaration of Sercan Acaci, made on 12 August 2021 with annexures (‘Acaci 1’); and
Declaration of Sercan Acaci made on 7 February 2022 with annexure (‘Acaci 2’).

The Applicant filed the following declaration as evidence in this opposition:

Declaration of David Barbuto, Chief Executive Officer of the Applicant, made on 10 November 2021 with Exhibits DB-1 to DB-13 (‘Barbuto Declaration’).

Acaci 1 and the Barbuto Declaration both contain clauses to the effect that information within those declarations is confidential. However, the confidential information is not specified. I adopt the approach of the delegate in Source Homeloans Pty Ltd v Coles Group Ltd.[1] Arguably, there are sensitive commercial matters in these declarations which I will not discuss in any detail in my reasoning. However, I will discuss the evidence to the degree necessary to provide sensible reasons for my decision.
[1] [2008] ATMO 17.
After the period for filing evidence ended, a request for a hearing by way of written submissions was filed. Marcus Fleming of Counsel made written submissions on behalf of the Applicant (‘Applicant’s Submissions’). 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.

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Details

Case: [2023] ATMO 101
Decision Date: 27 July 2023

CaseChat Overview and Summary

Acaci Pty Ltd (the opponent) opposed the registration of a trade mark application by UBreakIFix, Co (the applicant) under section 52 of the *Trade Marks Act 1995* (Cth). The opposition was heard by Sheona Robertson.

The primary legal issue before the court was whether the opponent had established grounds for opposition under section 62A of the *Trade Marks Act 1995* (Cth). This section allows for opposition where the applicant is not the owner of the trade mark and intends to assign it to a third party.

The court found that the opponent had not discharged the onus of proving that the applicant was not the owner of the trade mark or that the applicant intended to assign the trade mark to a third party. Consequently, the grounds for opposition under section 62A were not established. The court therefore ordered that the trade mark application proceed to registration.

Orders