Beyond Properties Pty Ltd v Andrew Knight

TRADE MARKS ACT 1995

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

Re:      Application 1001523 MYTHBUSTERS in the name of Andrew Knight and opposition thereto by Beyond Properties Pty Ltd and proposed suspension from opposition.

Date of Decision:	21 November 2006
Delegate:	Iain Thompson
Representation:	Andrew Knight Sue Chrysanthou of Counsel Beyond Properties Pty Ltd Sophie Goddard of Counsel
Decision:	Reg 5.16 – direction that opposition proceedings be suspended.

Background

1. Andrew Knight (‘Knight’) has applied to register the trade mark MYTHBUSTERS and, on 16 September 2004, this application was accepted for possible registration.  On 7 December 2004, registration of the trade mark was opposed by Beyond Properties Pty Ltd (‘Beyond’).  The grounds on which the registration is opposed are :

   ·    The opposed trade mark is not capable of distinguishing the goods and/or services for which registration is sought from the goods or services of other persons.

   ·    The use of the opposed trade mark would be contrary to law.

   ·    The use of the opposed trade mark would be likely to deceive or cause confusion.

   ·    The opposed trade mark is substantially identical with, or deceptively similar to, one or more trade marks whose registration in respect of similar goods or closely related services is being sought by the opponent and for which the priority date is earlier than that of the opposed trade mark.

   ·    The applicant is not the owner of the opposed trade mark.

   ·    The applicant does not intend to use or authorise use of the trade mark in Australia or to assign the trade mark to a body corporate for use by the body corporate in Australia in relation to the goods and/or services for which registration is sought

   ·    The Registrar accepted the application for the opposed trade mark on evidence or representations that were false in material particulars

   ·    Other grounds in the exercise of the Registrar’s discretion.

2. The parties are also engaged in an action in the Federal Court (NSD131/2005 ANDREW KNIGHT v BEYOND PROPERTIES PTY LTD & ORS) which has been heard before Justice Buchanan in the New South Wales Registry.

3. Beyond has filed application seeking that the proceedings before the Registrar of Trade marks be suspended from the opposition process until Justice Buchanan has made a decision in the matter before the Federal Court.  Knight has opposed this application.

4. I heard submissions from the parties at a hearing in Sydney on 16 October 2006.  Sophie Goddard of Counsel represented Beyond.  Sue Chrysanthou of Counsel represented Knight.

   Submissions

5. Ms Chrysanthou’s submissions were that these are opposition proceedings in respect of an accepted application and that:

   It is only the opponent's opposition that stands in the way of the applicant's prima facie right to have his application proceed to registration and thus his consequent ability to exercise the rights arising from the registration.

   It is incumbent on the opponent to prosecute its opposition in a timely fashion; otherwise the opposition will only serve to delay, unjustly, the…