Complete Technology Integrations Pty Ltd v Control Technology Inc - [2013] ATMO 16

TRADE MARKS ACT 1995

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

Re:Opposition by Complete Technology Integrations Pty Ltd to protection of international registration designating Australia 1218520(9, 42) (IR 947309) - CTI and DEVICE - filed in the name of Control Technology Inc.

Delegate:

Jock McDonagh

Representation:

Opponent: Ben Fitzpatrick of counsel instructed by Actuate IP Patent & Trade Mark Attorneys

Applicant: Andrew Fox of Counsel instructed by Griffith Hack Patent & Trade Mark Attorneys

Decision:

16 ATMO 2013

Reg. 17A.29 opposition – Ground pursued under section 60 established – IRDA refused protection.

Background

Application 1218520 is an international registration designating Australia (“IRDA”). It was filed in the name of Control Technology Inc. (“the Holder”) under the Madrid Protocol on 30 November 2007.
Details of the IRDA are as follows:

Trade mark:
Trade mark application: International Registration:	1218520 947309
Filing Date:	30 November 2007
Specification:	Class: 9 Computers and controls for computer peripherals Class: 42 Design, development and testing for electronic devices, namely computer hardware and software

Following its examination, the IRDA was provisions refused under section 44 of the Trade Marks Act 1995 (“the Act”). However, following evidence of use filed by the Holder, the provisions of subsection 44(4) and/or Reg 4.15A(5) of the Trade Mark Regulations 1995 (‘the Regulations’) were applied. IP Australia advertised its intention to extend protection to Australia in the Australian Official Journal of Trade Marks on 26 November 2009.
On 19 February 2010 Complete Technology Integrations Pty Ltd (‘the Opponent’) filed a Notice of Opposition (‘the Notice’) to extension of protection of the IRDA to Australia pursuant to Reg 17A.29 of the Regulations.
Thereafter the parties served and filed evidence as allowed by the provisions of the Regulations.
I heard the matter in Canberra as a delegate of the Registrar of Trade Marks on 30 November 2012. Ben Fitzpatrick of counsel instructed by Actuate IP, Patent & Trade Mark Attorneys, represented the Opponent. Andrew Fox of Counsel instructed by Griffith Hack, Patent & Trade Mark Attorneys, appeared by telephone link for the Holder.

Grounds of Opposition

The Notice nominated nine grounds of opposition available under the Trade Marks Act 1995 (“the Act”). At the hearing, Mr Fitzpatrick advised me that the following four grounds were pressed by the Opponent:

Contrary to law (Section 42(b))
Prior substantially identical or deceptively similar trade mark (Section 44)
Opponent’s earlier use of similar trade mark (Section 58A)
Reputation (Section 60)

To succeed in its opposition the Opponent bears the onus of establishing at least one of these four grounds. As will become apparent, I have only found it necessary to address the section 60 ground in this decision and this is discussed below. Of course, should the decision be appealed, it is open to the Opponent to plead any ground it considers relevant in proceedings before the Court.
None of the evidence served and filed by the Opponent appears to go to the grounds in the Notice that were not pressed and for…

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: [2013] ATMO 16
Decision Date: 1 March 2013

CaseChat Overview and Summary

Complete Technology Integrations Pty Ltd (the Holder) sought to extend protection for an International Registration Designating Australia (IRDA) in proceedings before the Registrar of Trade Marks. Control Technology Inc (the Opponent) opposed this application. The Registrar was required to decide whether to refuse or extend protection, having regard to the grounds of opposition.

The primary legal issue before the Registrar was whether any of the grounds of opposition raised by the Opponent had been established. Specifically, the Registrar considered the ground of opposition under section 60 of the *Trade Marks Act 1995* (Cth).

The Registrar reasoned that under regulation 17A.34(1) of the *Trade Marks Regulations 1995* (Cth), it was sufficient for the Opponent to establish only one ground of opposition to be successful. The Registrar found that the section 60 ground had been made out. Consequently, the Registrar determined that protection would not be extended to the IRDA and did not consider the remaining grounds of opposition. As the successful party, the Opponent was awarded its costs against the Holder.

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

Regulation 17A.34 provides:17A.34 Decision on opposition(1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:(a)to refuse protection in respect of all of the goods or services listed in the IRDA; or(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.(2) The Registrar must tell the International Bureau of his or her decision. In order for the Opponent to be successful, it is only necessary for one of the available grounds of opposition to be established by it. In this instance, I find that the Section 60 ground has been made out and I refuse to extend protection to the IRDA. That being so, I do not need to consider any of the remaining grounds of opposition, and I make no formal determination or finding in relation to those grounds. The Opponent sought its costs. As the successful party, the Opponent is entitled to its costs and I accordingly award costs against the Holder as per Schedule 8 of the Regulations.

Ratio Decidendi

Legal Principle Established

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