Adam Vella v Matrix Property Group Pty Ltd

[2023] ATMO 84

TRADE MARKS ACT 1995

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

Re:Opposition by Adam Vella to registration of trade mark application 2078360 (37, 42) – MATRIX PROPERTY GROUP – in the name of Matrix Property Group Pty Ltd

Delegate:

Nicholas Smith

Representation:

Opponent: Tisher Liner FC Law

Applicant: Lisa Win

Decision:

2023 ATMO 84

Trade Marks Act 1995 (Cth) - Section 52 opposition: s 60 considered and not established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Adam Vella (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Matrix Property Group Pty Ltd (‘Applicant’): 

Application Number:	2078360
Filing Date:[1]	1 April 2020
Services:	Class 37: Building construction consultancy; Provision of information in relation to building construction; Building and construction services; Building contractor services; Building of houses; Construction of buildings; Building project management; On-site construction supervision; Renovation of buildings; Renovation of kitchens; Project preparation relating to building renovation; Bricklaying; Painting and interior decorating services; Advisory services relating to the renovation of property; Structural engineering services (construction) Class 42: Architectural project management; Architectural services; Preparation of blueprints; Design of buildings; House design; Design of building interiors; Interior design services; Kitchen design; Advisory services relating to architecture; Advisory services relating to building design; Advisory services relating to interior design; Surveying; none of the aforementioned being services for noise and vibration control (‘Applicant’s Services’)
Trade Mark:	MATRIX PROPERTY GROUP	(‘Trade Mark’)

[1] Also known in this decision as the ‘relevant date’.

2.  Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

3.  Following the advertisement of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars on 25 November 2021 (‘SGP’). The SGP as rectified by this office raised the s 60 ground of opposition. The Applicant filed a Notice of Intention to Defend on 11 March 2022.

Evidence

4.  Neither party has provided any evidence that I may consider and, therefore, I am unable to provide any information about either party other than what is set out in the Register of Trade Marks.

5.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  The Applicant requested that the matter proceed to a decision without hearing and paid the appropriate fee.  As a result the matter has been allocated to a delegate of the Registrar for a decision based on the written record.

1. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the   application was opposed has been established. 

   In doing so I take account of       the written record comprised of the materials mentioned in the preceding paragraphs.

   Grounds of Opposition, Onus and Standard of Proof

   7. As indicated above, in the SGP the Opponent nominated a ground of opposition under s 60 of the Act. The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is 1 April 2020, being the filing date of the application in Australia (except in circumstances, not present here in which a different priority date is provided for in the Act).[4]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J), see also Trade Marks Act 1995 (Cth) s 29(1).

   8. As the Opponent has filed no evidence and provided no submissions, I have no hesitation deciding that the Opponent has not discharged the onus on it. Consequently, the Opponent has not to any extent established its ground of opposition under s 60 of the Act, which requires proof that the Opponent has a reputation in a particular mark.

   Decision

2. The Opponent has failed to establish the ground of opposition it nominated in the SGP.  Trade mark application number 2078360 may proceed to registration not less than one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

   Costs

3. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under s 221 of the Act in the relevant amounts under Schedule 8 of the Regulations.

   Nicholas Smith

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   27 June 2023