Cox Automotive Repairs Pty Ltd v Cox Automotive, Inc

[2020] ATMO 139

TRADE MARKS ACT 1995

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

Re:Opposition by Cox Automotive Repairs Pty Ltd to registration of trade mark application 1749862 (9, 35, 36, 39, 42) – COX AUTOMOTIVE – in the name of Cox Automotive, Inc. 

Delegate:	Nicholas Smith
Representation:	Opponent: Media Arts Lawyers Pty Ltd Applicant: Spruson & Ferguson
Decision:	2020 ATMO 139 Trade Marks Act 1995 (Cth) - Section 52 opposition: s 60 considered and not established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Cox Automotive Repairs Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Cox Automotive, Inc. (‘Applicant’): 

Application Number:	1749862
Filing Date:	3 February 2016
Goods and Services:	Class 9: Downloadable mobile applications for use in inventory management; downloadable mobile application for use in providing a marketplace for buyers and sellers of motor vehicles and information about vehicles for sale and for auction; downloadable mobile application software for use in managing sales, purchases, and auctions of motor vehicles; downloadable mobile applications for use in motor vehicle valuation, sales management, and marketing information management in the motor vehicle field; downloadable software in the nature of a mobile application for facilitating transactions, namely, the sale and exchange of new and used automobiles between buyers and sellers through providing buyers with information about sellers, goods and services Class 36: Motor vehicle auction services; motor vehicle auction services provided via the Internet; providing motor vehicle listings via the Internet and other electronic communications networks through an online searchable database; providing online inventory management in the field of motor vehicles; facilitating the wholesale sale of goods, namely, operating online marketplaces for buyers and sellers of motor vehicles; arranging and conducting wholesale auctions of motor vehicles via the Internet; ownership and title clearance, namely, state vehicular registration and title transfer services; vehicle records management, namely, collection and compilation of information and records into computer databases in the field of vehicles; business management of auctions; inventory management; providing vehicle transaction management services, namely, managing vehicle sale and auction transactions; copying of documents; providing business advice regarding inventory management and control in the motor vehicle field; business consulting services in the field of motor vehicles; transportation logistics services, namely, arranging the transportation of motor vehicles for others; infomediary services, namely, facilitating transactions in the nature of the sale and exchange of new and used automobiles between buyers and sellers through providing buyers with information about sellers, goods, and services via the Internet and other electronic communications networks; professional online networking services provided via the Internet and other electronic communications networks; appointment reminder services, namely the generation of electronic messages regarding appointments; none of the foregoing being or relating to lawn mowers, compact tractors, or other lawn care goods Class 36: Motor vehicle financing services; providing information to others concerning available lines of credit for use in connection with transactions involving vehicles; compilation and provision of business and statistical information, namely, valuation assessment indices in the field of used vehicles Class 39: Document storage and retrieval services, namely, arranging for pickup, delivery, storage, and transportation of documents via ground and air carriers; providing a service that enables users to access, track, and monitor motor vehicle location and condition while in transit via an interactive website Class 42: Motor vehicle inspection services; motor vehicle inspection services, namely, inspecting motor vehicles by analyzing and evaluating the condition of pre-owned motor vehicles for buyers prior to purchase to verify that pre- owned motor vehicles have been reconditioned and are in good working order; providing platform as a service (PAAS) services featuring software platforms for use in inventory management and inventory pricing and valuation, for use in the motor vehicle field; providing online non-downloadable software featuring technology that provides customers the ability to access multiple databases and motor vehicle industry services for the purpose of conducting motor vehicle auctions and purchase and sale transactions; providing temporary use of online non-downloadable computer software providing information and calculations for the appraisal and management of motor vehicle portfolios; providing platform as a service (PAAS) services featuring software for use in motor vehicle valuation, sales management, and marketing information management in the motor vehicle field; providing online non-downloadable software for data analysis in the field of motorized vehicle auctions and sales; providing online non-downloadable software that provides real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface; providing online non- downloadable software that provides web-based access to applications and computer services for inventory management, motor vehicle valuations, motor vehicle auctions and sales, marketing information management, motor vehicle inspections, and monitoring and tracking of vehicle locations through a web operating system and portal interface; electronic storage of documents; document validation, namely, electronic document authentication services, and authentication in the field of business transaction and automotive title documents; providing temporary use of non-downloadable computer software providing information and calculations for the appraisal and management of automotive dealership inventories; providing temporary use of on-line non- downloadable software for capturing, organizing and displaying the information and websites of others for use during a live auction for real-time auction participant support; providing online, non-downloadable software for use by automotive dealerships that allows users to perform internet lead management, customer relationship management, and inventory management; application service provider, namely, hosting computer software applications for business automation, time inventory management, resource management, workforce management, appointment and reservation scheduling, customer and workforce scheduling, processing, tracking, and reporting appointment, reservation and scheduling requests, for processing, tracking and reporting of billing and payment information, collecting, tracking, reporting, and analysis of resource utilization information, collecting, tracking, reporting, and analysis of customer or user information, forecasting, planning, and optimizing time and resource inventory and customer and workforce scheduling, forecasting, planning, and optimizing resource utilization, use in self-service customer registration, training, and scheduling; technical consultation services in the field of computer hardware and business automation software; development of business automation software for others; installation and maintenance of business automation software; technical support services, namely, troubleshooting of computer hardware and software problems via telephone, e-mail, online messaging and in-person (‘Applicant’s Goods and Services’)
Trade Mark:	COX AUTOMOTIVE	(‘Trade Mark’)
Endorsements:	Evidence and/or other circumstances provided under subsection 41(4).

2. Following the advertisement on 11 May 2017 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose and a Statement of Grounds and Particulars (‘SGP’) on 29 May 2017. The SGP raised a ground of opposition under s 60 of the Act. The Applicant filed a Notice of Intention to Defend on 24 July 2017.

Evidence and Submissions

3. Neither party filed any evidence in this matter.  The parties entered into a cooling-off period to allow for settlement negotiations but the period expired without the matter having been resolved.

4. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  By letter issuing from IP Australia on 23 May 2019 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had three months from the date of the letter to file any written submissions they wished to reply upon.  The Applicant filed short submissions on 20 August 2019.

5. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.

In doing so, I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

Grounds of Opposition, Onus and Standard of Proof

6. Nether party has provided any evidence and, therefore, I am unable to provide any information about either party other than what is set out in the Register of Trade Marks.

7. As indicated above in the SGP the Opponent nominated a ground of opposition under s 60 of the Act. The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 3 February 2016, being the filing date of the application in Australia (except in circumstances, not present here in which a different priority date is provided for in the Act).[3]

[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

[2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

8. As the Opponent has filed no evidence and provided no submissions, I have no hesitation deciding that the Opponent has not discharged the onus on it. Consequently, the Opponent has not to any extent established its ground of opposition under s 60 of the Act, which requires proof that the Opponent has a reputation in a particular mark. The mere filing of a Notice of Intention to Oppose and SGP without any supporting evidence or submissions does not serve to place the onus on the Applicant to defend its application.[4]

[4] Medley Distilling Co v Croakers Gully Australia Pty Ltd (2000) 53 IPR 430, 433.

Decision

1. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application no. 1749862 may proceed to registration not less than one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

   Costs

2. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995 (Cth).

   Nicholas Smith
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   18 August 2020