Ensinger GmbH v CGA Trading Pty Ltd - [2023] ATMO 117

TRADE MARKS ACT 1995

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

Re:Opposition by Ensinger GmbH to registration of trade mark application 2166488 – TECOR – in the name of CGA Trading Pty Ltd

Delegate:	Bianca Irgang
Representation:	Opponent: Not present at the hearing Applicant: Anthony Place of Patentable
Decision:	2023 ATMO 117 *Trade Marks Act 1995* (Cth) - Section 52 opposition – ss 42, 44 and 60 grounds of opposition considered – no grounds of opposition established.

Background

CGA Trading Pty Ltd (‘the applicant’), filed trade mark application number 2166488 on 1 April 2021 in class 17 of the International Classification of Goods and Services. Current details of the application are set out below.

Trade mark: TECOR (the ‘Trade Mark’)

Trade mark application no: 2166488

Filing Date: 1 April 2021

Specification: Class 17: Filled cartridges containing semi-worked thermoplastic filaments for use in 3D printing; Linear thermoplastic polyester (semi-worked) for use as hot melts; Panels of plastics (semi-worked); Rubber, raw or semi-worked; Semi-worked acrylonitrile butadiene styrene (ABS) filaments for use in 3D printing; Semi-worked goods made from plastics; Semi-worked panels of plastics materials; Semi-worked plastic products; Semi-worked plastics; Semi-worked plastics in the form of blocks; Semi-worked plastics in the form of fibres; Semi-worked plastics in the form of sections; Semi-worked plastics materials; Semi-worked polylactic acid (PLA) filaments for use in 3D printing; Semi-worked polymer resins in the form of fibres; Semi-worked polymer resins in the form of plates; Semi-worked thermoplastic filaments for use in 3D printing; Plastic filaments for 3D printing; Plastic materials in extruded form for use in manufacture; Plastic profiles in extruded form for use in manufacture; Plastics in extruded form for use in manufacture; Plastics in extruded form for use in packing; Rubber in extruded form for use in manufacture; Semi-processed plastics in extruded form for use in manufacture; Flexible hoses composed of plastics; Rubber hoses; Padding materials of rubber or plastic for use in the manufacture of furniture; Padding materials of rubber or plastics; Insulating materials; Latex (rubber); Plastic substances, semi-processed; Semi-processed plastic substances

Acceptance of the application for possible registration was advertised in the Australian Official Journal of Trade Marks dated 2 September 2021. Subsequently Ensinger GmbH (‘the opponent’) filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars (‘SGP’).
The applicant then filed its Notice of Intention to Defend. Thereafter, the opponent filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (Cth) (‘the Regulations’).
I heard the opposition by teleconference as a delegate of the Registrar of Trade Marks on 31 May 2023. The opponent was not present at the hearing but did provide written submissions for consideration by way of its legal representatives Griffith Hack. The applicant was represented Anthony Place of Patentable.

Grounds of Opposition

The SGP nominated a number of grounds of opposition under the Trade Marks Act 1995 (Cth ) (‘the Act’) and sections 44, 60 and 42(b) were pursued at the hearing.…

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: [2023] ATMO 117
Decision Date: 15 August 2023

CaseChat Overview and Summary

This decision concerns an application by Ensinger GmbH for trade mark registration, opposed by CGA Trading Pty Ltd. The Registrar of Trade Marks, Bianca Irgang, was required to determine whether to register the trade mark, having considered the grounds of opposition raised by CGA Trading Pty Ltd.

The central legal issue before the Registrar was whether any of the grounds on which CGA Trading Pty Ltd opposed the registration of Ensinger GmbH's trade mark had been established. Section 55 of the relevant Act dictates the Registrar's decision-making process in such circumstances, requiring a decision to register or refuse registration based on the success of any opposition grounds.

The Registrar found that CGA Trading Pty Ltd had not established any of the grounds on which it opposed the application. Consequently, pursuant to section 55(1)(b) of the Act, the Registrar decided to register the trade mark. The Registrar also ordered that registration would proceed one month from the date of the decision, unless an appeal was filed, in which case registration would be stayed pending the outcome of the appeal. Costs were awarded against the opponent, CGA Trading Pty Ltd, in accordance with section 221 of the Act and Schedule 8 of the Regulations.

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:55 Decision (1) 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.Note: For limitations see section 6. The opponent has not established any grounds of opposition. The trade mark application may accordingly proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration of the Trade Mark shall not occur until the appeal has been decided or discontinued. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the opponent under section 221 of the Act in terms of Schedule 8 of the Regulations.

Ratio Decidendi

Legal Principle Established

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