Communicare Inc v Communicare Sydney - [2009] ATMO 19

TRADE MARKS ACT 1995

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

Re:Opposition by Communicare Inc to registration of trade mark application 1021142(35, 36, 41, 43, 44, 45) - COMMUNICARE - filed in the name of Communicare Sydney.

Delegate:

Iain Thompson

Representation:

Opponent: Sophie Goddard, Senior Counsel.

Applicant: Doreen Perrin of Lesicar Perrin

Decision:

S52 opposition – section 44 – s44(3) and 4) considered – prior user of trade mark in relation to all services applied for not established – opposition established – application refused registration.

Costs ordered against applicant.

2009 ATMO 19

Background

In this matter, Communicare Sydney, (formerly Sydney Rescue Work Society) of Burwood, NSW, (‘the applicant’) has filed application to register a trade mark, current details of which appear below.

Application No: 1021142

Priority Date: 20 September 2004

Services:Class: 35 Employment services; personnel recruitment; placement services; arranging and conducting of programs associated with employment, personnel recruitment and personnel placement; business referral services; consulting, information and advisory services associated with the aforementioned services
Class: 36 Financial services; loan services, including arranging and conducting of loan schemes and the provision of loans; bill-paying services; charity services; fund raising services; financial counselling; consulting, information and advisory services associated with the aforementioned services
Class: 41 Education and training services; arranging and conducting of seminars; career counselling services being education/training advice; arranging and conducting of literacy programs; translation and interpretation services; provision of discussion forums; arranging and conducting of parenting education programs; community and migrant settlement services being such services in the area of training and education; anger management services; consulting, information and advisory services associated with the aforementioned services
Class: 43 Community, family and care services in this class; child care and day care services including vacation child care services; day nursery services; aged care services in the nature of accommodation; accommodation services; community and migrant settlement services being such service in the area of housing; crisis residential services; consulting, information and advisory services associated with the aforementioned services
Class: 44 Counselling services including individual, family counselling; therapeutic and rehabilitation services; aged care services in the nature of medical and nursing services; consulting, information and advisory services associated with the aforementioned services
Class: 45 Personal and social services rendered by others to meet the needs of individuals being community, migrant settlement, family and personal care services, such services including: community development and community building; referral services; personal, family and practical support services; outreach services; arranging and conducting parenting programs; arranging and conducting a family reunification and community reintegration program; aftercare services; consulting, information and advisory services associated with the aforementioned services

Trade Mark: COMMUNICARE

Endorsements: Provisions of subsection 44(4) applied.[1]
1. Subsection 44(4) provides an exception to the provisions of subsections 44(1) or (2):

The application was accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks on 13 October 2005.
On 11 January 2006 Communicare Inc of Cannington, Western Australia, filed Notice of Opposition to the registration of the…

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: [2009] ATMO 19
Decision Date: 25 February 2009

CaseChat Overview and Summary

Communicare Inc (the applicant) sought to register the trade mark "Communicare" in respect of various goods and services. Communicare Sydney (the opponent) opposed this application. The decision was made by Iain Thompson.

The primary legal issue before the court was whether the applicant's trade mark application should be registered, having regard to the grounds of opposition raised by the opponent. This required the court to consider the provisions of section 55 of the relevant Act, which outlines the Registrar's obligations when deciding on a trade mark application following opposition.

The court determined that the application should be refused. Section 55 of the Act mandates that the Registrar must decide to refuse or register a trade mark based on the extent to which any ground of opposition has been established. In this instance, the court found that the grounds of opposition were sufficiently established to warrant refusal of the application.

The court ordered that the trade mark application be refused. Furthermore, the opponent was awarded its costs at the official scale, to be paid by the applicant.

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

Section 55 of the Act provides:Decision55. Unless the proceedings are discontinued or dismissed, 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. I refuse to register application 1021142. The opponent is entitled to its costs at the official scale which I award against the applicant.

Ratio Decidendi

Legal Principle Established

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