Bencom Srl v Peter Loccisano & M. Rooke - [2006] ATMO 72

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS, WITH REASONS
Re:Opposition by Bencom s.r.l to registration of trade mark application 912346(25) - KILLER INSTINCT - filed in the name of Peter Loccisano and Matthew Rooke.

Delegate: Terry Williams

Representation: Opponent: Bencom s.r.l
Applicants: Peter Loccisano and Matthew Rooke

Decision: S 52 opposition: s 44 etc, KILLER INSTINCT not deceptively similar to KILLER LOOP; lack of case for s 59 ground. Registration proceeding
Background

Peter Loccisano and Matthew Rooke have applied to register the trade mark KILLER INSTINCT in relation to “footwear, clothing and headwear”. The application, number 912346, has been examined and accepted for possible registration but the latter is now opposed by Bencom s.r.l. (Bencom). Both parties have filed evidence to support their positions and the matter was set down for hearing.
At the hearing, James Maxwell appeared for the applicant and Simon Williams for Bencom. Mr Williams directed argument to grounds of opposition under sections 41, 42, 44, 59 and 60 of the Trade Marks Act 1995..
Grounds considered
Deceptive similarity issues
Leaving aside the ground under s 59, Mr Williams argued that all of the other grounds have a common hinge, deception and/or confusion brought on by the resemblance alleged to exist between the trade mark sought to be registered and that relied on by Bencom[1]. The conflict is said to be between the applicants’ trade mark KILLER INSTINCT and Bencom’s, both used and registered, KILLER LOOP.
[1] Mr Williams argued that, for the purposes of s 41, a deceptive trade mark is not capable of distinguishing. This is an interesting proposition but I do not think that it is correct. In brief, a trade mark such as COCA COLA does not lose its cabability of distinguishing goods simply because it is being used by some fraudulent misappropriator. As matters transpire below I will not need to draw the matter out by considering this issue further.
The hearing of this matter took place a considerable time ago, and I stress that I have carefully reviewed the tape of the hearing, the written submissions of the parties and my notes. However, it seems to me that the opposition has little merit and, on all grounds where the question of deception or confusion is at issue, it must fail.
At its strongest, Bencom’s argument is that s 10, which deals with deceptive similarity, is triggered. The section in question provides that:
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
There is no need to set out the full provisions of sections 44 and 60. Their terms are such that deceptive similarity is the key issue in both. If s 10 is not triggered, s 42 (which is said to be enlivened because of the fair-trading legislation of the various States) must also fail[2].

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: [2006] ATMO 72
Decision Date: 3 August 2006

CaseChat Overview and Summary

This decision concerns an opposition by Bencom Srl to the registration of a trade mark by Peter Loccisano and M. Rooke. The opposition was heard by Hearing Officer Terry Williams.

The primary legal issue before the Hearing Officer was whether the applicants, Mr Loccisano and Mr Rooke, had established sufficient use of their trade mark in Australia to justify its registration, or whether there was a lack of intention to use the mark as contemplated by section 59 of the relevant legislation. Bencom Srl contended that the evidence provided by the applicants was insufficient to demonstrate genuine use or intention to use the trade mark.

The Hearing Officer found that while the evidence presented by the applicants, particularly concerning the distinction between their business and a subsequent company, was not entirely clear and contained inconsistencies, it did not collectively rise to a level that would support an inference of a lack of intention to use the trade mark. The Hearing Officer noted that the applicants had provided evidence of use of the trade mark on t-shirts, although the quality of the evidence served on the opponent was defective. Applying the principles from *Aston v Harlee*, the Hearing Officer concluded that the evidentiary onus rested on Bencom Srl to establish grounds for opposition, and this onus had not been met.

Consequently, no ground of opposition was established, and the trade mark application was permitted to proceed to registration one month from the date of the decision, subject to any notice of appeal. Bencom Srl was ordered to pay the applicants' costs.

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

Mr Maxwell conceded that the domain name referred to in Mr Loccisano’s declaration is not active. Mr Williams described the detail beyond this and the administrative details and information provided to support the use claimed by the applicants as “a complete mish-mash”. This is probably somewhat harsh but I agree that it is not easy to be clear, from Mr Loccisano’s evidence, on the distinction between the business of which he and Mr Rooke are (or were) co-owners and the subsequent company. However, there does appear to have been use of the applicants’ trade mark on t-shirts although it would be unsafe to give this full weight[9]. Now is not the time or place to conduct a further investigation into the detail of this, or of the applicants’ intention with regard to footwear and headgear. The evidentiary onus rests on Bencom. The inconsistencies in the applicants’ evidence do not, collectively, rise to a point that they would support an inference of lack of intention within the terms of s 59. The registrar’s practice in that regard follows from Aston v Harlee[10]. [9] The Loccisano declaration refers to use “on the front, back and the inside of the T-shirt and on the swing-tag”. An exhibit which verifies this was filed by the applicants. However, for reasons which were not clear to Mr Maxwell, only a defective photocopy was served on the opponent and the applicants are not, strictly, entitled to rely on the details of the actual exhibit that were obscured.[10] (1960) 103 CLR 391 at 401Conclusion No ground of opposition has been established. The trade mark application may therefore 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 either the appeal has been discontinued or registration is ordered by the court. I direct that Bencom pay the costs of the applicants in accord with the relevant scale in the regulations.Terry WilliamsHearing OfficerTrade Marks Hearings3 August 2006

Ratio Decidendi

Legal Principle Established

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Delegate:	Terry Williams
Representation:	Opponent: Bencom s.r.l Applicants: Peter Loccisano and Matthew Rooke
Decision:	S 52 opposition: s 44 etc, KILLER INSTINCT not deceptively similar to KILLER LOOP; lack of case for s 59 ground. Registration proceeding