BlackSquare Inc v CRACKA IP Pty Ltd

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TRADE MARKS ACT 1995



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

Re:Oppositions by BlackSquare Inc to registration of trade mark application numbers 1927725 (33, 35) - WINE COLLECTIVE and 1941358 (33, 35) - THE WINE COLLECTIVE.COM.AU and device - both in the name of CRACKA IP Pty Ltd

Delegate: Louise Tuohy
Representation: Opponent: Stephen Rebikoff of Counsel instructed by Vardon Legal
Applicant: Tom Cordiner Kings Counsel and Anthony Middleton of Counsel instructed by Baxter IP
Decision: 2022 ATMO 168
Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 42(b), 58, 60, 62A pressed – no grounds established – trade marks to proceed to registration

Background

  1. This matter concerns oppositions by BlackSquare Inc (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the following trade mark applications in the name of CRACKA IP Pty Ltd (‘Applicant’):

    Application Number:  1927725

    Trade Mark:               WINE COLLECTIVE (‘725 trade mark’)

    Filing Date:                23 May 2018

    Specification:             Class 33: Wine

    Class 35: Retailing of goods (by any means); Cellar door sales of wine; Direct marketing (‘725 Goods and Services’)

    Endorsement:             Evidence and/or other circumstances provided under subsection 41(4)

    And

    Application Number:  1941358

    Trade Mark:               (‘358 trade mark’)

    Filing Date:                17 July 2018

    Specification:             Class 33: Wine; Alcoholic beverages (except beer); Alcohol for drinking

    Class 35: Retailing of goods (by any means); Retail services; Cellar door sales of wine; Direct marketing; Marketing; Distribution of goods (not being transport services) and wholesale of goods; Wholesaling of goods (by any means) (‘358 Goods and Services’)

  2. The trade mark applications were examined as required by s 31 of the Act and advertised as having been accepted for possible registration on 6 March 2020 for 725 trade mark and 20 January 2020 for 358 trade mark.

  3. The Opponent filed Notices of Intention to Oppose the registrations on 1 May 2020 for 725 trade mark and on 18 March 2020 for 358 trade mark. The Opponent filed its Statements of Grounds and Particulars (‘SGPs’) on 21 May 2020 for 725 Trade Mark and on 9 April 2020 for 358 trade mark. The Applicant filed Notices of Intention to Defend the registrations on 28 July 2020 for 725 trade mark and on 11 June 2020 for 358 trade mark.

  4. Thereafter the Opponent and Applicant filed evidence in accordance with the provisions of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

  5. Once the time for filing evidence had ended both parties requested to be heard. As a delegate of the Registrar of Trade Marks, I heard the matter on 14 September 2022 by way of video conference. Stephen Rebikoff of Counsel, instructed by Vardon Legal, appeared for the Opponent. Tom Cordiner of Kings Counsel and Anthony Middleton of Counsel, instructed by Baxter IP, appeared for the Applicant. Oral submissions were supplemented by the parties’ written submissions prior to…

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Details
Case
[2022] ATMO 168
Decision Date

CaseChat Overview and Summary

This matter concerned opposition proceedings before the Delegate of the Registrar of Trade Marks, Louise Tuohy. The Opponent, BlackSquare Inc, sought to oppose the registration of two trade marks, numbers 1927725 and 1941358, by the Applicant, CRACKA IP Pty Ltd. The Opponent alleged that the Applicant was not the owner of the trade marks, relying on section 58 of the *Trade Marks Act 1995* (Cth).

The primary legal issue before the Delegate was whether the Opponent had discharged its onus of establishing, on the balance of probabilities, that the Applicant was not the owner of the trade marks in question. The Opponent contended that it was the owner of a composite trade mark and the plain words "WINE COLLECTIVE", which it had used since 2009 overseas and late 2012 in Australia, and that these were substantially identical to the Opposed Trade Marks.

The Delegate considered the evidence filed by both parties. The Opponent's case relied on its asserted ownership and prior use of its trade marks in relation to various wine-related services. However, the Delegate found that the Opponent had not established a ground of opposition. Consequently, the Delegate decided that both trade mark applications could proceed to registration. The Delegate also awarded costs against the Opponent in favour of the Applicant.

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

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Evidence

Evidence Before The Court

The Opponent bears the onus of establishing at least one of the grounds of opposition.0F[1] The standard of proof is the ordinary civil standard of the balance of probabilities.1F[2] [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).[2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).Evidence The Opponent filed the same evidence in respect of each opposition as follows:Evidence in Support·Declaration of David Gluzman, Director of the Opponent, made on 11 March 2021, with Exhibits DG-1 to DG-17 (‘Gluzman declaration’).·Declaration of Matthew Protti, Director of the Opponent, made on 15 March 2021, with Exhibits MP-1 to MP-39 (‘First Protti declaration’).Evidence in Reply·Declaration of Matthew Protti made on 20 August 2021, with Exhibits MP-1 to MP-9 (‘Second Protti declaration’). The Applicant filed separate evidence in respect of each opposition as follows:Evidence in Answer725 trade mark·Declaration of Lloyd Heinrich, Director of the Applicant, made on 15 July 2021, with Exhibits LH-1 to LH-22 (‘Heinrich declaration’).358 trade mark·Declaration of Llyod Heinrich, made on 18 June 2021, with Exhibits LH-1 to LH-22.Legislative Background and Reasoning Before proceeding I note that in the SGPs the Opponent states it is the owner of the trade mark which I have reproduced below:(‘Composite trade mark’) Schedule 1 to the SGPs also lists the services provided by the Opponent under the Composite trade mark. The services are reproduced below:Class 35: On-line marketing of wine products for others; On-line wine club services, namely, providing wine purchasing suggestions and related ordering, fulfilment and delivery servicesClass 39: Delivery of goodsClass 41: Conducting seminars and presentations about wine; wine tasting services (education and entertainment); Operation of a web-site providing information about wines and a forum for people to discuss wineClass 43: Wine club services (the provision of drink); Wine tasting services (provision of beverages) (‘Opponent’s Services’) The SGPs also detail that the plain words WINE COLLECTIVE (‘Plain Word trade mark’) solus have been used by the Opponent in relation to the services reproduced at [12]. Section 58 Section 58 of the Act provides:58 Applicant not owner of trade mark The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark. In the SGPs the Opponent particularised the ground of opposition as follows:725 trade mark (1) The Opponent is the owner of the Opponent’s Trade Mark. (2) The Opponent first commenced using the mark ‘Wine Collective’ in 2009 overseas and in late 2012 in Australia in relation to the goods and services provided by the Opponent set out in Schedule 1. (3) The prominent feature in the Opponent’s Trade Mark are the words ‘Wine Collective’.(4) The Opposed Trade Mark is substantially identical to the Opponent’s Trade Mark. (5) The Opponent first commenced use of the Opponent’s Trade Mark earlier than the priority date of the Opposed Trade Mark being [23 May] 2018. (6) The Opposed Trade Mark covers services that are the same as the services covered by the Opponent’s Trade Mark.358 trade mark(1) The Opponent is the owner of the Opponent’s Trade Mark. (2) The Opponent first commenced using the mark ‘winecollective’ in 2009 overseas and in late 2012 in Australia in relation to the goods and services provided by the Opponent set out in Schedule 1. (3) The prominent feature in the Opponent’s Trade Mark is the words ‘winecollective’. (4) The Opposed Trade Mark is substantially identical to the Opponent’s Trade Mark. (5) The Opponent first commenced use of the Opponent’s Trade Mark earlier than the priority date of the Opposed Trade Mark being 17 July 2018. (6) The Opposed Trade Mark covers services that are the same as the services covered by the Opponent’s Trade Mark.

Decision

Reasons for decision

Section 55 of the Act 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 (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. The Opponent has not established a ground of opposition. Accordingly, I decide that trade mark numbers 1927725 and 1941358 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal, I direct that the disposition of the applications should be in accordance with the Court’s order or direction. Costs Both parties sought an award of costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. In respect of trade mark 1927725 I award costs against the Opponent under s 221 of the Act in line with the amounts set out in Schedule 8 of the Regulations. In respect of trade mark 1941358 I award costs against the Opponent in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd [2001] ATMO 78. Louise TuohyHearing OfficerDelegate of the Registrar of Trade Marks29 September 2022

Ratio Decidendi

Legal Principle Established

The Applicant filed separate evidence in respect of each opposition as follows:Evidence in Answer725 trade mark·Declaration of Lloyd Heinrich, Director of the Applicant, made on 15 July 2021, with Exhibits LH-1 to LH-22 (‘Heinrich declaration’).358 trade mark·Declaration of Llyod Heinrich, made on 18 June 2021, with Exhibits LH-1 to LH-22.Legislative Background and Reasoning Before proceeding I note that in the SGPs the Opponent states it is the owner of the trade mark which I have reproduced below:(‘Composite trade mark’) Schedule 1 to the SGPs also lists the services provided by the Opponent under the Composite trade mark. The services are reproduced below:Class 35: On-line marketing of wine products for others; On-line wine club services, namely, providing wine purchasing suggestions and related ordering, fulfilment and delivery servicesClass 39: Delivery of goodsClass 41: Conducting seminars and presentations about wine; wine tasting services (education and entertainment); Operation of a web-site providing information about wines and a forum for people to discuss wineClass 43: Wine club services (the provision of drink); Wine tasting services (provision of beverages) (‘Opponent’s Services’) The SGPs also detail that the plain words WINE COLLECTIVE (‘Plain Word trade mark’) solus have been used by the Opponent in relation to the services reproduced at [12]. Section 58 Section 58 of the Act provides:58 Applicant not owner of trade mark The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark. In the SGPs the Opponent particularised the ground of opposition as follows:725 trade mark (1) The Opponent is the owner of the Opponent’s Trade Mark. (2) The Opponent first commenced using the mark ‘Wine Collective’ in 2009 overseas and in late 2012 in Australia in relation to the goods and services provided by the Opponent set out in Schedule 1. (3) The prominent feature in the Opponent’s Trade Mark are the words ‘Wine Collective’.(4) The Opposed Trade Mark is substantially identical to the Opponent’s Trade Mark. (5) The Opponent first commenced use of the Opponent’s Trade Mark earlier than the priority date of the Opposed Trade Mark being [23 May] 2018. (6) The Opposed Trade Mark covers services that are the same as the services covered by the Opponent’s Trade Mark.358 trade mark(1) The Opponent is the owner of the Opponent’s Trade Mark. (2) The Opponent first commenced using the mark ‘winecollective’ in 2009 overseas and in late 2012 in Australia in relation to the goods and services provided by the Opponent set out in Schedule 1. (3) The prominent feature in the Opponent’s Trade Mark is the words ‘winecollective’. (4) The Opposed Trade Mark is substantially identical to the Opponent’s Trade Mark. (5) The Opponent first commenced use of the Opponent’s Trade Mark earlier than the priority date of the Opposed Trade Mark being 17 July 2018. (6) The Opposed Trade Mark covers services that are the same as the services covered by the Opponent’s Trade Mark.