Australian Grape and Wine Authority v Yi Li - [2018] ATMO 79

TRADE MARKS ACT 1995

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

Re:Opposition by Australian Grape and Wine Authority to registration of trade mark application 1749818 (33) - MEDAL - in the name of Yi Li

Delegate:	Aaron Walters
Representation:	Opponent: No submissions made Applicant: No submissions made
Decision:	2018 ATMO 79 *Opposition under section 52 of the Trade Marks Act 1995* – grounds under sections 41 and 43 of the Act – Section 41 established – trade mark registration refused.**

Background

On 3 February 2016, Mr. Yi Li (‘the Applicant’) filed an application for the following trade mark:
Application number: 1749818
Trade Mark: MEDAL
(‘the Trade Mark’)
In respect of the following goods:
Class 33:
Dry sparkling wines; Fortified wines; Mulled wines; Non-sparkling wines; Sparkling fruit wines; Sparkling wines; Still wines; Vintage wines
(‘the claimed goods’)
The Trade Mark was examined as required under s 31 of the Trade Marks Act 1995 (Cth) (‘the Act’), and advertised as having been accepted for possible registration in the Australian Official Journal of Trade Marks on 23 June 2016.
On 22 August 2016, the Australian Grape and Wine Authority (‘the Opponent’) filed a Notice of Intention to Oppose registration of the Trade Mark. A Statement of Grounds and Particulars (‘SGP’) followed on 22 September 2016 which outlined two grounds of opposition under ss 41 and 43 of the Act. The Applicant filed a Notice of Intention to Defend on 28 October 2016.
The Opponent filed its Evidence in Support in February 2017 and no further evidence has been provided by either party. No request to be heard was made and neither party has provided submissions for me to consider.

Authority to decide the matter

As a delegate of the Registrar of Trade Marks,[1] I provide the following reasons for the decision that follows, which is made under s 55(1) of the Act based solely on what is contained in the SGP and the Opponent’s Evidence in Support.
[1] Pursuant to s 206(2) of the Act.

Evidence

The evidence in question consists of the following:

Statutory Declaration made by Rachel Jane Triggs, General Counsel and Registrar of Geographical Indications and Other Terms of the Opponent, made on 3 February 2017, with Exhibits RJT-1 to RJT-22 (‘Triggs’).

Grounds of Opposition and Onus

The Opponent relies upon both of the nominated grounds in the SGP. To succeed, the Opponent need only establish one of these nominated grounds.[2] As will be seen below, I have determined the Opponent has successfully established opposition under s 41 of the Act. Accordingly, I have found it necessary to address this ground only. Should this decision be appealed to a prescribed court, it nevertheless remains the prerogative of the Opponent to pursue their s 43 ground or any other ground available to them under the Act.
[2] Section 55(1) of the Act.
The onus of proof rests with the Opponent,[3] with the standard being the civil standard on the balance of probabilities.[4] The rights of 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: [2018] ATMO 79
Decision Date: 21 May 2018

CaseChat Overview and Summary

The Australian Grape and Wine Authority (AGWA) sought to register the trade mark "Yi Li" for wine. Yi Li opposed the application. The Delegate of the Registrar of Trade Marks was required to decide whether to register the trade mark.

The primary legal issue before the Delegate was whether the nominated ground of opposition under section 41 of the *Trade Marks Act 1995* (Cth) had been established. This section concerns the registrability of a trade mark, specifically whether it is capable of distinguishing the applicant's goods or services from those of other persons.

The Delegate reasoned that the opponent had succeeded in establishing the ground of opposition under section 41. Consequently, as section 55(3) of the Act did not apply, the Delegate refused to register the trade mark application.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

Section 55(1) of the Act provides: Decision(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 The Opponent has succeeded in establishing the nominated ground of opposition under s 41 of the Act. Section 55(3) of the Act does not apply and as the Delegate of the Registrar I refuse to register trade mark application number 1749818.

Ratio Decidendi

Legal Principle Established

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