Andrew Hutcheson v Grayson's International Pty Ltd

[2025] ATMO 13

TRADE MARKS ACT 1995

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

Re:Opposition by Andrew Hutcheson to registration of trade mark application number 2248940 (class 6) – LEAFSCREENER (fig.) - in the name of Grayson’s International Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: Self-represented

Applicant: Self-represented

Decision:

2025 ATMO 13

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 43 and 58 considered – no grounds established – trade mark to proceed to registration subject to the resolution of any pending oppositions subject to the resolution of any pending oppositions

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Andrew Hutcheson (‘Opponent’) to registration of the trade mark detailed below in the name of Grayson’s International Pty Ltd (‘Applicant’):

Trade Mark:        (‘Trade Mark’)

Number:2248940 (‘Application’)

Filing Date:         12 February 2022 (‘Relevant Date’)          

Specification:     Class 6: Metallic building materials and components including, roof materials, large items of hardware, plumbing accessories, drainage parts, gutter protection parts, gutter guards, meshes, barriers, fire ember guards, fixing devices, grids, guttering, spouting, pipes, tubes, water storage containers, coverings for guttering, wire, props, posts, collars, bolts, screws, angle trims, fittings, anchors, clip clamps, screens, sheets, channels, extrusions, castings, wire products and small items of hardware; (‘Applicant’s Goods’)

[1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

1. Following the advertisement of acceptance of the Trade Mark for possible registration, the Opponent filed a Notice of Intention to Oppose on 21 August 2022, followed by a Statement of Grounds and Particulars (‘SGP’) on 16 September 2022.  The Applicant filed a Notice of Intention to Defend on 1 October 2022.

2. The parties then had an opportunity to file evidence in accordance with the Regulations. The Opponent did not file any evidence in support of the opposition. As evidence in answer, the Applicant filed a Declaration of Grayson O’Connor made on 27 March 2023 with Appendixes 1 to 8. The Opponent did not file any evidence in reply.

3. Following the conclusion of the evidence stage, the parties were given the opportunity to request a hearing.  Neither party asked to be heard but the Applicant requested a decision without a hearing.  This matter has been allocated to me to determine as a delegate of the Registrar of Trade Marks and I do so based on the aforementioned materials.

Grounds, onus and Relevant Date

1. In its SGP, the Opponent nominated grounds of opposition under ss 43 and 58.

2. The Opponent bears the onus of establishing at least one ground of opposition.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] 

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

   [3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

3. The date at which the rights of the parties are to be determined is the Relevant Date, being both the filing date and priority date of the Application.[4]

Discussion

[4] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592, 595 (Kitto J).

Section 58

1. Section 58 provides that ‘registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark’. The term ‘owner’ is not defined in the Act but it is well established that the owner of a trade mark is the first person to either use the mark in Australia for the relevant goods or services (or the ‘same kind of thing’) or file an application to register the mark in Australia, whichever is the earlier.

2. Accordingly, to succeed on this ground of opposition, the Opponent must establish by way of evidence that:

   ·  the Trade Mark is identical, or substantially identical, to an earlier trade mark;[5]

   ·  the trade mark upon which the Opponent relies has been used in respect of goods that are ‘the same kind of thing’ as the Applicant’s Goods;[6] and

   ·  a person other than the Applicant has an earlier claim of ownership based on prior use of the earlier trade mark before the Relevant Date.[7]

   [5] Carnival Cruise Lines Inc. v Sitmar Cruises Limited [1994] FCA 936; (1994) 31 IPR 375 (Gummow J).

   [6] Re Hicks Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636 (Holroyd J).

   [7] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

3. In its SGP, the Opponent claims that:

   The applicant didn’t design or develope (sic) Leafscreener and has no rights to the trade mark.  Michel Sichel is attributed with the concept, design, development, he was awarded the Australian design award in 1991.

4. The Opponent bears the onus of establishing by way of evidence that another person is the owner of the Trade Mark.  No evidence has been filed to substantiate the above claim and accordingly, the s 58 ground of opposition fails.

Section 43

1. Section 43 states:

2. Trade mark likely to deceive or cause confusion

   An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

3. To establish a ground of opposition under s 43, there must be an inherent connotation within the trade mark. As Gyles J in Pfizer Products Inc v Karam commented:

   ‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question...[8]

   [8] [2006] FCA 1663;(2006) 70 IPR 599, [53].

4. In Winton Shire Council v Lomas, Spender J said:

   Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60.[9]

   [9] [2002] FCA 288; (2002) 119 FCR 416; (2002) 56 IPR 72, [19].

5. The s 43 ground of opposition was particulatised in the SGP as follows:

   The trademark that includes the word Leafscreener will create great confusion and easily deceive consumers and other businesses, my business has been an active business using the name Leafscreener since 2009, plus there are 53 other registered businesses that include the word Leafscreener, Granting the trademark, would unfairly result and to assume the goodwill of businesses, and to imply associations of other businesses.

6. The Opponent provides no evidence to support the particulars of this ground and as such I find that the ground has not been established. In any event, in order for s 43 to operate to prevent the registration of the Trade Mark, the requisite confusion or deception must arise from a connotation within the Trade Mark itself rather than as a result of any reputation that the Opponent may be able to demonstrate in its own mark(s), or confusion between the Trade Mark and trade marks owned by the Opponent or third parties. The first step in establishing this ground of opposition requires the Opponent to identify some connotation inherent in the Trade Mark. The Opponent has provided no evidence to suggest such a connotation exists.

7. The s 43 ground of opposition is unsuccessful.

Decision

1. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade mark application number 2248940 may proceed to registration after the appeal period expires and pending the outcome of any other oppositions to registration of the Trade Mark.

2. If the Registrar is served with a notice of appeal, I direct that registration shall not occur until the appeal has been decided or discontinued.  The disposition of the Application should otherwise be in accordance with the Court’s order or discretion.

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 in the relevant amounts under Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

15 January 2025