Dragon Boat QUeensland Inc v Blair Gamble

[2024] ATMO 166

TRADE MARKS ACT 1995

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

Re:Opposition by Dragon Boat Queensland Inc to registration of trade mark application number 2276310 (class 41) – Coast to Coast Dragon Boat Festival - in the name of Blair Gamble

Delegate:

Tracey Berger

Representation:

Opponent: Self represented

Applicant: Katherine Dixon

Decision:

2024 ATMO 166

Trade Marks Act 1995 (Cth) – opposition under section 52 – s 58 and
s 62A grounds nominated – s 58 established – trade mark refused registration

Background

1. This is a decision on the opposition by Dragon Boat Queensland Inc (‘Opponent’) pursuant to s 52 Trade Marks Act 1995 (Cth)[1] to registration of the trade mark which is the subject of the application detailed below in the name of Blair Gamble (‘Applicant’):

Trade Mark:        Coast to Coast Dragon Boat Festival (‘Trade Mark’)

Number:              2276310 (‘Application’)

Filing Date:        12 June 2022

Services:Class 41: Arranging and conducting of sports events; Hosting of sporting events; Organisation of sporting events; Organising of entertainment and social events (entertainment, sporting and cultural services)

(‘Applicant’s Services’)  

[1] Any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

1. Following the advertisement of acceptance of the Application for possible registration, on 22 December 2022, the Opponent filed a Notice of Intention to Oppose and a Statement of Grounds and Particulars (‘SGP’).  The Applicant filed a Notice of Intention to Defend on 31 March 2023.

2. The Opponent filed its evidence in support of the opposition on 5 January 2024 consisting of a declaration of Jennifer Anne Shapland, Finance Office- Board for the Opponent, made on 5 January 2024 with 18 attachments (‘Shapland’).  No other evidence was filed in the proceedings.

3. Once the evidence stage ended, the parties were given the opportunity to request a hearing.  Neither party asked to be heard and the Opponent requested a decision without a hearing.  This matter has been allocated to me to determine as a delegate of the Registrar of Trade Marks and I do so based on the aforementioned materials.

Grounds, onus and relevant date

1. In the SGP, the Opponent particularised grounds of opposition under ss 58 and 62A. 

2. The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[2]  The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

3. The date at which the rights of the parties are to be determined is 12 June 2022 (‘Relevant Date’) being the filing date of the Application.

Opponent’s evidence

1. According to Shapland, the Opponent is a non-profit organisation which adopted the mark Coast to Coast Dragon Boat Festival in 2020 for use to run, promote and gain sponsorship of a biannual dragon boat racing festival (‘Event’).

2. The Opponent’s Event was first held under the Trade Mark from 7-9 May 2021.  The Opponent planned to hold the Event again from 27-29 May 2022 before changing the festival to a biannual event alternating with the Pan Pacific biannual event.

3. On 11 and 12 November 2023, the Opponent held its second Event which was sponsored by the Sunshine Coast Council.

Discussion

Section 58

1. Section 58 provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark. The term ‘owner’ is not defined in the Act. However, it is well established that in the absence of fraud, the owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application for it in Australia, whichever is the earlier.

2. To succeed on this ground of opposition, the Opponent needs to establish that:

• the Trade Mark is identical, or substantially identical, to an earlier trade mark;[4]

• the earlier trade mark has been used in respect of good or services that are ‘the same kind of thing’ as the Applicant’s Services;[5] and

• another person has an earlier claim of ownership based on use of the earlier trade mark before the Relevant Date (given that the Applicant has not provided any evidence that it has used the Trade Mark before this date).[6]

  [4] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).

  [5] Re Hicks’s Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636, 640 (Holroyd J).

  [6] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [50] (Greenwood, Jagot and Beach JJ).

1. The Opponent claims to be the first user of the Trade Mark in Australia, having adopted the mark in 2020 and used it to organise, promote and run dragon boat racing events.

2. The mark relied on by the Opponent is identical to the Trade Mark and the services for which it claims to have used the Trade Mark are the same or the ‘same kind of thing’ as the Applicant’s Services.

3. In support of its claim to have used the Trade Mark for the same services as the Applicant’s Services before the Relevant Date, the Opponent has provided numerous documents including:

• various minutes and documents of the Opponent’s Board which refer to the Opponent’s intention to use the Trade Mark for the Event from December 2020;

• evidence that the Opponent organised and held the Event under the Trade Mark in 2021 including copies of the 20 March 2021 Board minutes which include an update on the Event, Opponent’s Covid Safe Plan, race draw with lists of teams entered in each event and the Opponent’s Bulletin promoting the Event which outlines the fees, racing schedule, entry deadline and other particulars of the Event; copy of the race draw for the Event;

• evidence that the Opponent initially intended to hold the Event in 2022 including copy of the Board minutes of 9 January 2022 agreeing to hold the Event in 2022, screenshot of a postdated 11 April 2022 from the Opponent’s Coast to Coast Dragon Boat Festival Facebook account promoting the 2022 Event under the Trade Mark; and

• evidence after the Relevant Date showing the Opponent was planning and organising the Event for 2023 including the Event Marketing Plan 2023 and a promotional flyer for the 2023 Event.

1. I am satisfied based on my assessment of the Opponent’s evidence, that the Opponent has used the Trade Mark in Australia before the Relevant Date for services which are the same or the same kind of thing as the Applicant’s Services.  Accordingly, I find that the Applicant is not the owner of the Trade Mark and the Opponent has successfully established a ground of opposition under s 58.

Decision

1. Section 55 relevantly provides:

   Unless subsection (3) applies to the proceedings, 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.

2. The Opponent has established the s 58 ground of opposition. Accordingly, I refuse to register trade mark application number 2276310.  The refusal is to be recorded one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the refusal shall not occur until the appeal has been withdrawn or discontinued. Otherwise, the disposition of this application should be in accordance with the Court’s orders or directions.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

9 September 2024