Brightflash USA LLC - [2020] ATMO 22

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReTrade Mark Application number 1886228 (9) – IWATCH - in the name of Brightflash USA LLC

Delegate:

Nicholas Smith

Representation:

Applicant: Brian Elkington of Adams Pluck

Decision:

2020 ATMO 22

Trade Marks Act 1995 (Cth) – Request to be heard under section 33(4) of the Trade Marks Act 1995 - s 41 considered – trade mark accepted for registration in Australia.

Background

On 9 November 2017, Brightflash USA LLC (‘Applicant’) lodged a divisional application to register the trade mark detailed below under the Trade Marks Act 1995 (‘Act’).

Application Number:

1886228

Filing Date:

9 November 2017

Priority Date:

5 June 2013 (the parent being 1722783)

Goods:

Class 9: global positioning system devices; accessories, parts, components, and cases for all of the foregoing goods; none of the aforementioned being credit card embossing machines (computer peripherals)

(‘Applicant’s Goods’)

2. Trade Mark:

IWATCH

3. (‘Trade Mark’)

2. On 24 January 2020 the Applicant filed a divisional application from the present application (Trade Mark Application No. 2064711). Prior to that application the Trade Mark was also sought to be registered for Computer software; computers; computer hardware; computer peripherals; wireless communication devices (‘Identified Goods’)

The application was examined as required under s 31 of the Act. On 15 December 2019 IP Australia issued an adverse examination report, identifying grounds for rejection pursuant to ss 41 and 44 of the Act. The s 44 ground has been resolved through amendment but with respect to the s 41 ground the examiner stated in connection with the Identified Goods only that the Trade Mark has as its main feature IWATCH which ‘indicates the nature of your goods in class 9 and that they are in the form of, or are intended to be used with, intelligent watches, that is IWATCHes’. Other traders should be able to use IWATCH in connection with goods and services similar to the [Identified] Goods.
On 12 September 2019 the Applicant provided a response to the examination report containing submissions in respect of the s 41 ground of opposition. The submissions did not persuade the examiner, who issued a further report on 30 September 2019 noting that as IWATCH refers to a watch with intelligent features or function and that intelligent watches are basically computers worn in the form of a wristwatch then the Trade Mark describes the Identified Goods.
On 12 December 2019, the Applicant requested to be heard by the Registrar of Trade Marks under s 33 of the Act. Following the filing of the divisional application referred to above and on request of the Applicant the hearing listed on 4 February 2020 was cancelled and Brian Elkington of Adams Pluck, representing the Applicant provided me with an outline of written submissions (‘Applicant’s Submissions’) in accordance with the pre-hearing directions I had given.
Legislative framework
Under s 33(1)(b) of the Act, the Registrar…

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: [2020] ATMO 22
Decision Date: 17 February 2020

CaseChat Overview and Summary

This matter concerned an application by Brightflash USA LLC to register the trade mark "IWATCH" in Australia. The application had been accepted for registration by the Registrar of Trade Marks, but a request was made for a hearing under section 33(4) of the *Trade Marks Act 1995* (Cth). The hearing officer, Nicholas Smith, was tasked with determining whether the application should be accepted or rejected.

The primary legal issue before the hearing officer was whether the trade mark "IWATCH" was inherently adapted to distinguish the applicant's goods, specifically GPS devices, from the goods or services of other persons, as required by section 41 of the *Trade Marks Act 1995*. This consideration arose in the context of the Registrar's obligation under section 33 of the Act to accept an application unless satisfied there were grounds for rejection.

The hearing officer reasoned that the ground of opposition under section 41 had not been established in relation to the applicant's goods. He found that the trade mark "IWATCH" was not descriptive of GPS devices and that there would be no necessity for other traders to use the word in relation to such goods. Consequently, he was satisfied that the trade mark was inherently adapted to distinguish the applicant's goods.

Accordingly, the hearing officer accepted the application for registration of the trade mark "IWATCH".

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

No examiner has raised the s 41 ground of opposition in respect of the Applicant’s Goods, only the Identified Goods which are no longer the subject of this application. I am satisfied that IWATCH is inherently adapted to distinguish the Applicant’s Goods, being GPS devices, from the goods or services of other persons and capable, on that basis alone, of so distinguishing the Applicant’s Goods. The Trade Mark is not in any way descriptive of the Applicant’s Goods and there would be no need for other traders to use the word in respect of the Applicant’s Goods. The ground for rejection has not been established. Decision Section 33 of the Act relevantly provides:33Application accepted or rejected(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:(a)the application has not been made in accordance with this Act; or(b)there are grounds under this Act for rejecting it.(2)The Registrar may accept the application subject to conditions or limitations.(3)If the Registrar is satisfied that:(a)the application has not been made in accordance with this Act; or(b)there are grounds under this Act for rejecting it;the Registrar must reject the application. As I am not satisfied that there is a ground for rejection under s 41 of the Act in relation to the Trade Mark, I accept the application to register the Trade Mark. Nicholas SmithHearing OfficerOppositions and Hearings17 February 2020

Ratio Decidendi

Legal Principle Established

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Application Number:	1886228
Filing Date:	9 November 2017
Priority Date:	5 June 2013 (the parent being 1722783)
Goods:	Class 9: global positioning system devices; accessories, parts, components, and cases for all of the foregoing goods; none of the aforementioned being credit card embossing machines (computer peripherals) (‘Applicant’s Goods’)
2. Trade Mark:	IWATCH	3. (‘Trade Mark’)