Bent Creek Vineyards Pty Ltd v Long Lunch Wines Pty Ltd

[2018] ATMO 145

TRADEMARKSACT 1995

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

Re:Opposition by Bent Creek Vineyards Pty Ltd to registration of trade mark application 1777941 (33) - Sir Lunch A Lot - in the name of Long Lunch Wines Pty Ltd.

DELEGATE:

Iain Campbell Thompson

REPRESENTATION:

Opponent: DBH Commercial Lawyers Applicant: Collison & Co

DECISION:

2018 ATMO 145

Trade MarksAct1995
Section 52 opposition to registration - grounds under 58A, 60, and 43

-  onus  on  the  Opponent  but  no  evidence  filed  -  opposition  not established

Background

1. In these proceedings under the Trade Marks Act 1995 (‘the Act’) Long Lunch Wines Pty Ltd (‘the Applicant) has made application to register the trade mark which appears below:

Application No:         1777941

Priority Date:             20 June 2016

Goods:  Class 33: Alcoholic beverages (except beer)

Trade Mark:               Sir Lunch A Lot

(‘the Trade Mark’)

1. The Trade Mark was examined as prescribed by section 31 of the Act and advertised for possible registration in the Australian Official Journal of Trade Marks on 10 November 2016.

1. On 9 January 2017, as allowed by section 52 of the Act, Bent Creek Vineyards Pty Ltd (‘the Opponent’) filed Notice of Intention to Oppose the registration of the Trade Mark.

1. On 9 February 2017, the Opponent filed its Statement of Grounds and Particulars (‘the SGP’) citing grounds under sections 58A, 60, and 43 of the Act.

1. Subsequently, on 4 May 2017, the Applicant filed a Notice of Intention to Defend.

1. The Opponent has not filed Evidence in Support of its Opposition and the Applicant has not filed Evidence in Answer.

1. Both parties have been advised of their right to be heard or to make written submissions in relation to these proceedings. Neither party has availed themselves of these opportunities. Now, as a delegate of the Registrar of Trade Marks, I am to decide this matter on the basis of the written record – that is, those materials mentioned in the foregoing paragraphs.

Onus and Relevant Date

1. The Opponent bears the onus of establishing one or more grounds of opposition which are detailed in the SGP on the balance of probabilities.1

1. The relevant date at which the grounds under section 52 must be considered is the filing date of the opposed application which is here the same as the priority date.2

Discussion

1. Each of the grounds specified in the SGP (under sections 58A, 60, and 43) is dependent on the Opponent filing evidence which establishes either a prior application for registration3 or prior use4 of some other trade mark or that the Trade Mark has some connotation inherent within it such that the use of the Trade Mark would confuse or deceive.5 As the Opponent has not filed such evidence, no ground could be established.

Decision

1. Section 55 of the Act relevantly provides:

55  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

1  Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per

Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132] to [133].

2 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592.

3 The operation of section 58A is ultimately dependent on the establishment of a ground under sections 44(1) or 44(2).

4  See the discussion of by Kenny J how ‘reputation’ may be established in McCormick & Co Inc v McCormick

[2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 from [81] to [86].

5 See, for example, Winton Shire Council v Lomas [2002] FCA 288; (2002) 119 FCR 416; (2002) 56 IPR 72 per Spender J at [19].

(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.

1. The Opponent has not established a ground of opposition.

1. 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 the disposition of the application should be in accordance with the Court’s order or direction.

Costs

1. The Opponent requested its costs in this matter. However, as the Applicant has been the successful party, in terms of section 221 of the Act I award costs against the Opponent at the official scale as set out in Schedule 8 to the Trade Marks Regulations 1995.

Iain Campbell Thompson Hearing Officer

Trade Marks Hearings 13 September 2018