Bickfords Australia Pty Ltd v Frank Ward

TRADE MARKS ACT 1995

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

IN THE MATTER of Trade Mark Application 1121582(43) – FRUITIES & Device - in the name of for Frank Ward and opposition thereto by Bickfords Australia Pty Ltd

Delegate:

Debrett Lyons

Representation:

Applicant: No appearance

Opponent: Anthony Norris of Collison & Co.

Decision:

2008 ATMO 88

Section 52 opposition: section 42(b) not established since no proven reputation; section 58 not established since trade marks not substantially identical; section 59 not established since no serious inference could be drawn the applicant did not use or intend to use the trade mark; section 44 not established since the services not closely related to the goods.

Costs:  No award

Background

1. Frank Ward (‘the applicant’) filed an application to register a trade mark, current details of which appear below:

   Application number:  1121582

   Filing date:  2 July 2006  

   Services specification:                  Provision of food and drink including take away services (class 43)         

   Trade mark:  

   (‘the trade mark’)

2. Following examination, the trade mark was accepted for possible registration and acceptance of the application was advertised in the Official Journal of Trade Marks on 14 December 2006. Bickfords Australia Pty Ltd (‘the opponent’) filed a Notice of Opposition under section 52 of the Trade Mark Act 1995 (‘the Act’), objecting to the registration of the trade mark.

3. The opponent filed evidence in support of its opposition on 12 June 2007 in accordance with the Trade Mark Regulations 1995.  The evidence in support comprised a Statutory Declaration of Ms Rebecca Prisk, General Counsel for the opponent, dated 12 June 2007, supported by Exhibits RP1 and RP2.

4. The opponent attempted to serve that evidence on the applicant at its address for service but the evidence was returned to its sender.  The applicant did not file any evidence in answer and did not make any written submissions.

5. The opponent asked to be heard and the matter came before me, Debrett Lyons, as a delegate of the Registrar of Trade Marks, in Adelaide on 26 August, 2008.  The applicant made no appearance and the opponent was represented by Anthony Norris, Trade Mark Attorney, of Collison & Co, Patent and Trade Mark Attorneys.

   Notice of Opposition

6. The Notice of Opposition cites every ground of opposition available to the opponent under the Act however at the hearing Mr Norris limited his submissions to those grounds of opposition under sections 42(b), 44, 58 and 59.  For the sake of completeness, I treat the remaining grounds of opposition as having been abandoned.

   Submissions and Reasoning

   Onus

7. The opponent bears the onus of establishing its grounds of opposition.  The opposition will succeed if one of those grounds is established.  The standard of proof is the balance of probabilities (Blount v Registrar of Trade Mark (1998) 83 FCR 50; Rejfek v McElroy (1965) 112 CLR 517 at 521).

   Section 58 - applicant is not the owner of the trade mark

8. To establish a section 58 ground of opposition, the…