BlendTec Inc. v Healthy Foods LLC - [2016] ATMO 69

TRADE MARKS ACT 1995

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

Re:Opposition by BlendTec, Inc. to registration of trade mark application 1544596 (7) - SPIRAL DEVICE - in the name of Healthy Foods, LLC.

Delegate:

Nicole Worth

Representation:

Opponent: Siobhan Ryan of Counsel, instructed by Davies Collison Cave Patent & Trade Mark Attorneys.

Applicant: James Maxwell of Peter Maxwell & Associates.

Decision:

2016 ATMO 69

Opposition under s 52 of the Trade Marks Act 1995 – grounds of opposition under ss 42(b), 44, 58 and 60 – general ground of ‘Registrar’s discretion’ not applicable – s 44 established but s 44(4) applied – no other grounds established – application to proceed to registration.

Background

In this matter BlendTec, Inc (‘the Opponent’) opposes registration of trade mark application no. 1544596 under s 52 of the Trade Marks Act 1995 (‘the Act’). The trade mark application is in the name of Healthy Foods, LLC (‘the Applicant’), and the relevant details of the application are shown below.
Trade Mark:    (‘the Trade Mark’)
Filing Date:   6 March 2013
Goods:  Class 7: Electric food processors
The application was examined as required by s 33 of the Act and accepted for possible registration. The acceptance was advertised in the Australian Official Journal of Trade Marks on 27 June 2013.
After being granted an extension of time, the Opponent filed a Notice of Intention to Oppose registration on 29 August 2013 followed by a Statement of Grounds and Particulars (‘SGP’) on 30 September 2013. The SGP was deemed to be inadequate (about which more will be discussed shortly) and so an adequate SGP was filed 20 November 2013. The Applicant filed a Notice of Intention to Defend the opposition on 21 January 2014.
The parties filed their evidence in due course and the matter was set down to be heard in July 2015. In June 2015 the Opponent filed a request to add a ground of opposition under s 58A to its SGP which was disputed by the Applicant, and so the hearing date was vacated in order that the amendment request could be resolved. The request was ultimately refused.
The substantive hearing was rescheduled and took place before me, a delegate of the Registrar of Trade Marks, in Canberra on 29 June 2016. Siobhan Ryan of Counsel instructed by Madeleine Chan of Davies Collison Cave appeared by video conference on behalf of the Opponent. James Maxwell of Peter Maxwell & Associates appeared by telephone on behalf of the Applicant.

Grounds and onus

In order to succeed in its opposition the Opponent bears the onus of establishing at least one ground of opposition upon the ordinary civil standard of the balance of probabilities.[1] The rights of the parties are generally to be determined as at the filing date of the opposed application, here being 6 March 2013.[2]
[1] Per Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] and Telstra Corporation Ltd v Phone Directories Co Pty Ltd

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.

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Details

Case: [2016] ATMO 69
Decision Date: 7 September 2016

CaseChat Overview and Summary

This decision concerns a trade mark application by BlendTec Inc. (the Applicant) opposed by Healthy Foods LLC (the Opponent). The dispute arose from the Opponent's opposition to the registration of the Applicant's trade mark. The decision was made by Nicole Worth, presumably acting in a capacity akin to the Registrar of Trade Marks under Australian trade mark legislation.

The primary legal issue before the decision-maker was whether to register the Applicant's trade mark, having regard to the grounds of opposition raised by the Opponent. Specifically, the decision-maker had to determine if the Opponent had established any grounds for opposition and, if so, whether the Applicant could rely on any exceptions to those grounds. The decision-maker was required to apply subsection 55(1) of the Act, which mandates a decision to either refuse or register a trade mark based on the established grounds of opposition.

The decision-maker found that the Opponent had established a ground for opposition under subsection 44(1) of the Act. However, the Applicant successfully demonstrated that the provisions of subsection 44(4) applied, which allows for registration in certain circumstances, such as prior continuous use. Consequently, the trade mark application was permitted to proceed to registration one month from the date of the decision, subject to an endorsement reflecting the application of subsection 44(4) and/or Regulation 4.15(5). The decision-maker also ordered that registration be stayed if a notice of appeal was served before the expiry of the one-month period, with the final disposition to follow any court order. Costs were awarded against the Opponent.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

Subsection 55(1) of the Act provides:55Decision(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.Note:For limitations see section 6. The Opponent has established the ground under s 44(1) however the Applicant has satisfied me that the provisions of s 44(4) apply. Accordingly trade mark application 1544596 may proceed to registration one month from the date of this decision with an entry in the register in the form of an endorsement that reads ‘Provisions of subsection 44(4) and/or Reg 4.15(5) applied’ (being the standard wording to reflect that an application has been accepted on account of prior continuous use). 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 that the disposition of the application should be in accordance with the Court’s order or direction. Costs normally follow the event, and as there is no apparent reason to depart from the principle I award costs against the Opponent in accordance with Schedule 8 of the Trade Marks Regulations 1995.

Ratio Decidendi

Legal Principle Established

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