Andando Pty Ltd v DDT Liners (Australia) Pty Ltd

[2017] ATMO 124

TRADE MARKS ACT 1995

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

Re:Opposition by Andando Pty Ltd to registration of trade mark application 1688574 (37) - DDT Liners - in the name of DDT Liners (Australia) Pty Ltd.

Delegate:	Decision on the Written Record Iain Campbell Thompson
Representation:	Opponent:HopgoodGanim Lawyers Applicant: Condon Charles Lawyers
Decision:	2017 ATMO 124 Trade Marks Act 1995 s52 opposition to registration - onus on Opponent to establish opposition - no evidence before the Registrar - opposition not established

Background

1. In these proceedings under the Trade Marks Act 1995 (‘the Act’) DDT Liners (Australia) Pty Ltd (‘the Applicant’) has filed the application for registration of the trade mark which appears below:

Application No:           1688574
Priority Date:               21 April 2015

Services:Class 37: Installation of Geo-membrane materials to provide environmental containment solutions

Trade Mark:                DDT Liners

(‘the Trade Mark’)

1. The Trade Mark was examined as mandated by section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 10 September 2015.

2. On 25 September 2015, Andando Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark.

3. On 23 October 2015, the Opponent filed a Statement of Ground and Particulars detailing grounds under section 41, 58, 60, 43, and 62A of the Act.

4. On 19 November 2017 the Applicant filed a Notice of Intention to Defend.

5. Evidence in Support was due by 28 February 2016 but was not filed.  An application for an extension of time to file Evidence in Support was refused by a delegate of the Registrar of Trade Marks on 30 June 2016.[1]

   [1] 2016 ATMO 43.

6. Both parties have been advised of their right to be heard or to make written submissions – neither party has chosen either option.

7. Now, in order that the Registrar may discharge her obligation under section 55 of the Act to decide the matter, it has been allocated to me, one of her delegates, for my decision on the written record which consists of the documents mentioned in the preceding paragraphs.

Onus & Relevant Date

1. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[2]

   [2] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6]-[26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132]-[133].

2. The relevant date at which the grounds under section 52 of the Act must be considered is the filing date of the opposed application. [3]

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

Decision

1. Section 55 of the Act relevantly provides:

   55Decision

   (1)Unless subsection (3) applies to the proceedings, 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.

   Note:For limitations see section 6.

2. Each of the grounds detailed in the Statement of Grounds and Particulars requires evidence to satisfy the Registrar that the ground has been established.

3. It follows that, if there is no evidence to support those grounds, the opposition cannot be regarded by the Registrar as having been to any extent established.

4. The trade mark application may then proceed to registration 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 the appeal has been decided or discontinued and that the disposition of the application be in accordance with the Court’s order or direction.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
23 October 2017