Certsy Pty Ltd v Certn Holdings Inc - [2023] ATMO 138

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Registrar’s refusal to suspend opposition by Certsy Pty Ltd to registration of trade mark application 2155460 – CERTN – in the name of Certn Holdings Inc.

Delegate:

Nicole Worth

Representation:

Certsy Pty Ltd: written submissions prepared by David Larish, counsel, instructed by King & Wood Mallesons.

Certn Holdings Inc: written submissions prepared by Andrew Sykes, counsel, instructed by Blueprint Law.

Decision:

2023 ATMO 138

Trade Marks Regulations 1995 (Cth) – reg 5.19 Registrar may give a direction – request for direction to suspend opposition – Federal Court proceedings afoot – alleged commonality of issues before Registrar and Federal Court – alleged deprivation of defence if opposition not decided – balance of convenience – refuse to give direction to suspend.

Background

This decision is in respect of the Registrar’s refusal to direct, under reg 5.19 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’),[1] to suspend an opposition mounted by Certsy Pty Ltd (‘Certsy’) to registration of the trade mark the subject of application number 2155460, filed in the name of Certn Holdings Inc (‘Certn’).
[1] All references in this decision to a regulation are references to the Trade Marks Regulations 1995 (Cth), and all references to a section of an act are references to sections of the Trade Marks Act 1995 (Cth) (‘Act’).
Certn filed its application for registration of the trade mark CERTN on 11 February 2021. In due course it was accepted, and after advertisement of the acceptance Certsy opposed registration by filing a Notice of Intention to Oppose followed by a Statement of Grounds and Particulars, relying in part upon its own trade marks CERTSY and CERTSY with a device.
Certsy filed its evidence in support of the opposition on 9 January 2023. Certn filed its evidence in answer on 11 April 2023. In the meantime, Certsy initiated proceedings in the Federal Court on 2 April 2023 alleging trade mark infringement, breaches of the Australian Consumer Law and passing off at common law. On this basis Certsy wrote to the Registrar on 13 June 2023 requesting a direction pursuant to reg 5.19 that the opposition be suspended pending the determination of the Federal Court proceedings. A delegate of the Registrar wrote to the parties indicating an intention to make such a direction but sought the comments of Certn given the request had been made unilaterally by Certsy.
Certn responded on 4 July 2023 that it objected to the suspension of the opposition for reasons including that doing so would prejudice its position in the proceedings before the Federal Court. The Registrar’s delegate then wrote to the parties declining the request to suspend the opposition in view of Certn’s objection and setting a due date for evidence in reply from Certsy.
Certsy filed evidence in reply on 17 July 2023, and on 19 July 2023 filed a request for a hearing in respect of the refusal to suspend…

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: [2023] ATMO 138
Decision Date: 13 September 2023

CaseChat Overview and Summary

Certsy Pty Ltd (the applicant) sought a direction from the Registrar of Trade Marks under regulation 5.19 of the *Trade Marks Regulations 1995* (Cth) to suspend opposition proceedings concerning a trade mark application by Certn Holdings Inc (the respondent). The applicant contended that Federal Court proceedings were already underway, involving allegations of commonality of issues with the opposition proceedings. The applicant argued that it would be deprived of a defence if the opposition were not decided concurrently with the Federal Court proceedings.

The primary legal issue before the Registrar was whether to exercise discretion under regulation 5.19 to suspend the opposition proceedings. This required the Registrar to consider the balance of convenience, specifically weighing the potential prejudice to the applicant if the opposition were not suspended against any prejudice to the respondent. The Registrar also had to assess the alleged commonality of issues between the two sets of proceedings and whether this commonality warranted a suspension.

In refusing to give the direction to suspend, the Registrar considered the balance of convenience. The Registrar found that the applicant had not demonstrated sufficient prejudice to warrant a suspension of the opposition proceedings. While acknowledging the existence of Federal Court proceedings and the applicant's assertion of common issues, the Registrar determined that the potential for delay in the opposition proceedings, and the respondent's right to have its trade mark application processed without undue postponement, outweighed the applicant's concerns. The Registrar applied the principle that a suspension should only be granted where there is a clear and compelling reason, and that the onus rests on the party seeking the suspension to establish such a reason.

The Registrar therefore refused to give a direction to suspend the opposition proceedings.

Orders