Blend A/S v Barefoot Dreams, Inc - [2024] ATMO 216

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Blend A/S to registration of trade mark application number 2148363 (classes 24, 25) – LUXEBLEND – in the name of Barefoot Dreams, Inc.

Delegate:

Debrett Lyons

Representation:

Opponent: Spruson & Ferguson

Applicant: A J Park

Decision:

2024 ATMO 216

Trade Marks Act 1995 (Cth) – opposition under s 52 – ss 44 and 60 pressed – neither established – trade mark to be registered

Background

This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by Blend A/S (‘Opponent’) to registration of the following trade mark:
Trade mark no:         2148363
Trade mark:             LUXEBLEND (‘Trade Mark’)
Applicant:                 Barefoot Dreams, Inc. (‘Applicant’)
Filing date:               12 January 2021
Priority date:            13 July 2020 (claiming convention priority from United States Patent & Trademark Office application serial no. 90049286)
Specification:           Class 24: Baby blankets; Bed blankets; Bed sheets; Bed throws; Blanket throws; Children's blankets; Crib sheets; Receiving blankets; Throws.
Class 25: Booties; Headwear for babies and children; Jackets for babies and children; Mittens; Nightgowns; Pajamas for babies and children; Pullovers; Robes; Slippers; Swaddling clothes; T-shirts for babies and children; Tops as clothing; Children's and infant's apparel, namely, jumpers, overall sleepwear, rompers and one-piece garments; Cardigans; Coverups; Hats; Hats for infants, babies, toddlers and children; Hooded pullovers; Pants; Ponchos; Scarves; Shawls; Shirts; Shorts; Sweaters; Wearable blankets in the nature of blankets with sleeves; Babies' pants; Baby bodysuits; Baby bottoms; Clothing layettes; Baby tops; Bath slippers; Bathrobes; Camisoles; Chemises; Crew neck sweaters; Dresses; Dresses that may also be used as towels; Hooded sweatshirts; Housecoats; Leggings; Long sleeve pullovers; Loungewear; Sandals and beach shoes; shoes; Sarongs; Sweatpants; Clothing wraps.
(‘Applicant’s Goods’)
The Trade Mark was examined as required by s 31 of the Act and advertised as accepted for registration in the Australian Official Journal of Trade Marks on 11 April 2022. The Opponent filed a notice of intention to oppose on 14 June 2022 and a statement of grounds and particulars (‘SGP’) on 14 July 2022. The Applicant filed a Notice of Intention to Defend on 19 August 2022.
Thereafter, starting 16 November 2022, the parties agreed to a cooling-off period which did not, in the end, resolve the opposition. When the timetable for proceedings recommenced, the Opponent did not file evidence in support of its grounds of opposition. The Applicant requested to be heard by way of written submissions. Written submissions by the Opponent were due 16 October 2024, and by the Applicant 23 October 2024. Submissions were received from the Applicant but there was nothing from the Opponent.
The matter has been allocated to me, a delegate of the Registrar of Trade Marks, to decide which I do based on the application for registration, the SGP and the Applicant’s written submissions.
Grounds of opposition, onus, and relevant date
In the SGP, the Opponent nominated…

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.

Keep reading for free

Create a free CaseChat account to read Blend A/S v Barefoot Dreams, Inc and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2024] ATMO 216
Decision Date: 6 November 2024

CaseChat Overview and Summary

This decision concerns an opposition by Blend A/S to the registration of a trade mark by Barefoot Dreams, Inc. The opposition was heard by a Hearing Officer of the Trade Marks and Designs office.

The Hearing Officer was required to determine whether the grounds of opposition raised by Blend A/S under section 44(1) of the relevant Act had been established. Section 55 of the Act also required the Hearing Officer to decide whether to refuse or register the trade mark, having regard to the established grounds of opposition.

The Hearing Officer found that at least one requirement of section 44(1) was not satisfied, meaning the ground of opposition under that section was unsuccessful. Consequently, the Hearing Officer decided that the trade mark application should proceed to registration, subject to a one-month period from the date of the decision, unless an appeal was filed. The Hearing Officer also awarded costs against the Opponent in favour of the Applicant, applying the usual principle that costs follow the event.

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

Accordingly, at least one requirement of s 44(1) is not satisfied. The s 44 ground of opposition is therefore unsuccessful.Decision Section 55 of the Act relevantly provides:(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 application number 2148363 should proceed to registration after one month from the date of this decision. If the Registrar is served with a notice of appeal then the disposition of the application should be in accordance with the Court’s order or direction. Costs The Applicant sought costs. It is usual for costs to follow the event, and there is no reason to depart from that principle in this case. I award costs against the Opponent in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth). Debrett LyonsHearing OfficerOppositions and HearingsTrade Marks and Designs6 November 2024

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.