Australian Postal Corporation v Sendle Pty Ltd

TRADE MARKS ACT 1995

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

Re:Opposition by the Australian Postal Corporation to registration of trade mark application 1654845 - POST WITHOUT THE OFFICE - in Class 39 in the name of Sendle Pty Ltd

Delegate:

Debrett Lyons

Representation:

Opponent: Ed Heerey QC, instructed by Liam Nankervis of Ashurst Australia.

Applicant: Hamish Bevan of Counsel, instructed by Fisher Adams Kelly Callinans, Patent & Trade Mark Attorneys.

Decision:

2017 ATMO 42

Trade Marks Act 1995

Section 52 opposition to registration: – sections 41, 42(b), 44 and 60 considered; no ground of opposition established. Opposition unsuccessful; trade mark to be registered.

Background

1.     In these proceedings under the Trade Marks Act 1995 (‘the Act’) Sendle Pty Ltd (‘the Applicant’) is the present applicant for registration of the trade mark which appears below:

Application No: 1654845

Priority Date:  27 October 2014

Trade Mark:  POST WITHOUT THE OFFICE   (‘the Trade Mark’)

Services:Class 39: Transportation, courier, mail, parcel delivery and postal services; services rendered in delivering documents, goods, packets, parcels and cargo from one place to another; the pick-up, transportation, delivery, packaging, tracking and storage of documents, packages and cargo; coordination of transportation, courier and logistics services; providing information in relation to such services; brokerage and forwarding of cargo; customs clearance services being customs bonded warehousing; franking services; dispatch services (‘the Services’)

2.     Acceptance of the Trade Mark for possible registration was advertised in the Australian Official Journal of Trade Marks on 12 March 2015.

3.     On 12 May 2015, the Australian Postal Corporation (‘the Opponent’), filed a Notice of Intention to Oppose the registration of the Trade Mark.

4. On 12 June 2015, the Opponent filed its Statement of Grounds and Particulars which detailed grounds of opposition under sections 41, 42(b), 44 and 60 of the Act.

5.     On 13 July 2015, the then applicant, TuShare Pty Ltd, filed a Notice of Intention to Defend.

6.     The parties have filed evidence in support, evidence in answer and evidence in reply as further discussed below.

7.     The parties were informed of their right to be heard or to make written submissions.  Both asked to be heard and at a hearing in Canberra on 21 February 2017, the Opponent was represented by Ed Heerey QC, instructed by Liam Nankervis of Ashurst Australia (also in attendance) and the Applicant was represented by Hamish Bevan of Counsel, instructed by Fisher Adams Kelly Callinans, Patent & Trade Mark Attorneys.

Onus

8.     The Opponent bears the onus to demonstrate that the Trade Mark should not be registered by establishing one or more of its grounds of opposition.[1]  The standard of proof required in that regard is the ordinary civil standard of the balance of probabilities.[2]   The relevant date at which the grounds must be considered is the Priority Date of the application which in this case is the same date as the filing date of that application, 27 October 2014.[3]