Chris De Lorenzo v Deva Concepts LLC - [2012] ATMO 55

TRADE MARKS ACT 1995

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

Re:Opposition by Chris De Lorenzo to registration of trade mark application 1274947(3) - DEVA - filed in the name of Deva Concepts LLC.

Delegate:

Nicole Worth

Representation:

Opponent: Peter Maddigan, of Counsel, instructed by Hodgkinson McInnes Patents.

Applicant: Trevor Stevens of Davies Collison Cave Patent & Trade Mark Attorneys.

Decision:

2012 ATMO 55

Section 52 opposition – ss44, 59, 60 and 62A pressed - none established – trade mark to proceed to registration– costs awarded against opponent.

Background

On 1 December 2008 Deva Concepts LLC (‘the Applicant’) applied to register a trade mark, current details of which appear below:
Trade Mark: DEVA
Application No: 1274947
Goods: Class 3: Full line of hair care products namely, hair care preparations, hair cleaning preparations, hair styling preparations, hair dressings, shampoo, conditioners, hair spray, hair gel, dyes, rinses, bleach, relaxers, lighteners, and straighteners.
The application was examined and ultimately accepted for possible registration under the provisions of subsection 44(3)(b) of the Trade Marks Act 1995 (‘the Act’). The provisions of subsection 44(3)(b) were applied on the basis of a letter of consent from a third party who owned a number of trade marks containing or comprising of the word DIVA. The acceptance was advertised in the Australian Official Journal of Trade Marks on 24 June 2010.
On 3 September 2010 Wella Aktiengesellschaft, of Germany (subsequently named Wella GmbH, referred to here as ‘Wella’), filed a Notice of Opposition nominating most of the grounds available under the Act to oppose an application, and the parties duly served and filed their evidence.
Subsequently the right or interest in the opposition became vested in Chris De Lorenzo (‘the Opponent’), by way of the assignment to him of a number of registrations, in the name of Wella, which formed the basis of the opposition. In the lead up to the hearing the Opponent sought to adduce further evidence, to which the Applicant initially objected and subsequently at the hearing conceded. This is discussed further in the section below entitled ‘Evidence’.
I heard the matter as a delegate of the Registrar of Trade Marks in Sydney on 17 April 2012. Peter Maddigan of Counsel, instructed by Hodgkinson McInnes Patents, represented the Opponent. Trevor Stevens, Partner with Davies Collison Cave Patent and Trade Mark Attorneys, represented the Applicant.

Evidence

Wella’s evidence in support consists of a statutory declaration made by Brigitte Grab of Wella on 1 February 2011 with Exhibits UH-1 to UH-10, and Confidential Exhibits UH-7 and UH-11. It details the history of the subject application, and provides information regarding the trade mark DELVA (owned at the time by Wella). Ms Grab states that the DELVA trade mark has been registered in Australia since 1971, and goods bearing the mark are declared to have been sold in Australia “from at least 1993”. Recent sales and advertising figures are given, as well as sample advertisements and web site images.
The Applicant’s evidence in answer…

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: [2012] ATMO 55
Decision Date: 19 June 2012

CaseChat Overview and Summary

In the Federal Court of Australia, Justice Nicole Worth considered a dispute between Chris De Lorenzo (the applicant) and Deva Concepts LLC (the respondent). The core of the disagreement concerned the respondent's alleged infringement of the applicant's trade mark. The applicant sought interlocutory relief to restrain the respondent from continuing the alleged infringement.

The primary legal issue before the Court was whether the applicant had established a sufficient likelihood of success in their claim for trade mark infringement to warrant the grant of an interlocutory injunction. This required the Court to assess whether the respondent's use of its mark was likely to cause confusion among consumers as to the origin of the goods or services, thereby infringing the applicant's registered trade mark.

Justice Worth applied the well-established principles governing the grant of interlocutory injunctions, including the need to demonstrate a serious question to be tried and that damages would not be an adequate remedy. The Court considered the degree of similarity between the respective marks, the nature of the goods or services offered, and the likely perception of the relevant consumer. The Court found that the applicant had not discharged the onus of demonstrating a sufficient likelihood of success at trial to justify the grant of interlocutory relief.

Consequently, the Court ordered that the application for an interlocutory injunction be dismissed.

Orders