Ex-Centris Production v 9197-3396 Quebec Inc

[2018] ATMO 156

TRADE MARKS ACT 1995

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

Re:Opposition by Ex-Centris Production to registration of trade mark application 1771892 (9, 25, 28, 41) – BRUNCH ELECTRONIC with disc device - in the name of 9197-3396 Quebec Inc.

Delegate:	Bianca Irgang
Representation:	Opponent: Siobhan Ryan of Counsel instructed by Wadeson Patent and Trade Mark Attorneys Applicant: Not present at the hearing
Decision:	2018 ATMO 156 Trade Marks Act 1995 - Section 52 opposition: section 58 ground of opposition established for all services and goods – registration refused.

Background

1. 9197-3396 Quebec Inc. (‘the applicant’), filed trade mark application number 1771892 on 20 May 2016 in classes 9, 25, 28 and 41 of the International Classification of Goods and Services. Current details of the application are set out below.

   Trade mark:   (the ‘Trade Mark’)

   Trade mark application no: 1771892

   Filing Date:  20 May 2016

   Convention Details:               19 May 2016
     1783162
     Canada

   Specification:  Class 9: Eyewear; sunglasses; sun visors (eyewear)

   Class 25:Clothing; headwear; t-shirts; shirts; V-neck shirts; sweaters; camisoles; sun visors (headwear); rain ponchos

   Class 28:Games and playthings; toys; beach toys; sand buckets;

   Class 41: Entertainment; live entertainment; musical entertainment; organisation of entertainment events; variety shows; musical shows; DJ's performances and dance performances on the Internet; organizing, producing and holding festive events, namely themed cultural workshops, light shows, variety shows, musical shows, DJ's performances and dance performances

   Endorsements:  Convention priority claimed: 19 May 2016, Canada, No. 1783162 in respect of SUNGLASSES in class 9; T-SHIRTS, SHIRTS, V-NECK SHIRTS, SWEATERS, CAMISOLES, SUN VISORS, RAIN PONCHOS in class 25; SAND BUCKETS in class 28; AUDIO-VIDEO CAPTATION AND BROADCASTING OF LIGHT SHOWS, VARIETY SHOWS, MUSICAL SHOWS, DJ'S PERFORMANCES AND DANCE PERFORMANCES ON THE INTERNET; ORGANIZING, PRODUCING AND HOLDING FESTIVE EVENTS, NAMELY THEMED CULTURAL WORKSHOPS, LIGHT SHOWS, VARIETY SHOWS, MUSICAL SHOWS, DJ'S PERFORMANCES AND DANCE PERFORMANCES in class 41.

2. Acceptance of the application for possible registration was published in the Australian  Official Journal of Trade Marks dated 13 October 2016. Subsequently Ex-Centris Production (‘the opponent’) filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars.

3. The applicant then filed its Notice of Intention to Defend. Thereafter the opponent and applicant respectively filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

4. I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 2 July 2018. The opponent was represented by Siobhan Ryan of Counsel instructed by Wadesons Patent and Trade Mark Attorneys. The applicant was not present at the hearing and did not provide written submissions.

   Grounds of Opposition

5. The Notice nominated a number of grounds of opposition under the Trade Marks Act 1995 (‘the Act’). Those grounds being under sections 58, 59 and 62A were pursued at the hearing. The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2] Should the opponent establish one ground of opposition in relation to all of the applicant’s services, there is no requirement for me to consider the other grounds of opposition.

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

   [2] Pfizer Products Inc v Karam [2006] FCA 1663 [6] - [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132]-[133]

   Evidence

6. The evidence in this matter consists of the following declarations being:

   Evidence in Support

   ·Declaration of Francois Ylija M Jozic ( ‘Jozic 1’) dated 21 June 2017 with annexures FYMJ-1a to FYMJ-9

   Evidence in Answer

   ·Declaration of Pascal Lefebvre (the ‘Lefebvre declaration’) dated 26 September 2017 with annexures PL1 to PL4

   Evidence in Reply

   ·Declaration of Francois Ylija M Jozic ( ‘Jozic  2’) dated 5 December 2017 with annexures FYMJ-10 to FYMJ-18

   Discussion

   Section 58 – Applicant not the owner of the trade mark

7. Section 58 of the Act provides:

   58             Applicant not owner of trade mark

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

8. In order to make out a ground of opposition under section 58, the opponent must establish that:

   ·   the respective trade marks of the applicant and opponent are either identical or substantially identical,[3]

   ·   the respective goods and services on which the trade marks have used  are the ‘same kind of thing’ as the applicant’s goods and services ^[4]

   ·   the opponent has the earlier claim to ownership based on authorship[5] and use of its trade mark prior to both the filing of the application and any actual use of the Trade Mark by the applicant.[6]

   [3] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd (1994) 120 ALR 495; 31 IPR 375

   [4] Re Hicks’ Trade Mark (1897) 22 VLR 636, 3 ALR 75

   [5] Authorship in that sense involves the origination or first adoption of the word as and for a trade mark Aston v Harlee Manufacturing Company [1960] HCA 47; (1960) 103 CLR 391 [399]

   [6] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 [413]

9. It must firstly be determined if the opponent has used an identical or substantially identical mark to the Trade Mark. The test for substantial identity is that the trade marks are to be:

   compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.”[7]

   [7] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1961) 109 CLR 407 per Windeyer J [414]

10. The respective trade marks to be compared are as follows:

The Trade Mark	Opponent’s trade mark
BRUNCH ELECTRONIK

1. A comparison of the opponent’s trade mark and the Trade Mark creates an impression of resemblance.[8] The trade marks of the parties are comprised of the identical words and the minimal stylization in the Trade Mark is not sufficient to overcome the similarities between the trade marks. I find that the respective trade marks are substantially identical.

   [8] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495

2. In regards to the second point, it is clear that the opponent uses its BRUNCH ELECTRONIK trade marks on the production and promotion of music festivals and on plastic cups[9]. The applicant has not yet used its Trade Mark on the claimed good and services[10] although I do note that the applicant has used another trade mark, PIKNIK ELECTRONIK, in Melbourne since 2015[11]. Therefore, the opponent’s goods and services are the same to those claimed by the Trade Mark and the opponent must demonstrate use of its substantially identical trade mark in Australia before 19 May 2016 which is the convention priority date of the Trade Mark.

   [9] Paragraph 5 t o7 of Jozic 1 declaration.

   [10] Paragraph 18 of the Lefebvre declaration

   [11] Paragraph 16 of the Lefebvre declaration

3. I must now determine whether the opponent was the first user of the trade mark in Australia. To this end, it is clear that the opponent’s music festivals take place overseas in such cities as Lisbon, Madrid and Barcelona since 2014[12]. However, I note that the opponent advertises its music festivals and DJ events on an international level with artists from around the world appearing to perform at the events[13]. Further to this, the opponent has provided evidence that these advertisements were aimed at the international market and that a number of Australian residents holding Australian credit cards purchased tickets to its BRUNCH ELECTRONIK branded music events held in Barcelona, Madrid and Lisbon[14]. These advertisements and purchases took place before the convention date of the Trade Mark and can be traced back to Australian IP addresses since at least February 2016[15].

   [12] Paragraph 5 of Jozic 1 declaration

   [13] Annexures FYMJ-4 through to FYMJ-9 accompanying Jozic 1 declaration

   [14] Annexure FYMJ-3 accompanying Jozic 1 declaration

   [15] Paragraph 18 of Jozic 1 declaration and Annexure FYMJ-3 accompanying Jozic 1 declaration

4. I also note that correspondence between the opponent and the applicant has taken place over the use of the opponent’s Trade Mark[16]. It is clear from email evidence provided that the opponent developed the expression BRUNCH ELECTRONIK in 2013[17]. The opponent made the applicant aware that it would be providing music festivals under its BRUNCH ELECTRONIK trade mark while maintaining a business arrangement with the applicant. The opponent commenced obtaining registration for its trade mark in a number of international jurisdictions and the applicant’s lawyer, Francis Perreault, asked for a list of the opponent’s registered trade marks on 29 October 2014[18]. Further to this, in October 2014, in a presentation prepared jointly by the opponent and the applicant to Le Centre d’Art Contemporain Arsenal in Montreal, Canada, the applicant expressly noted that it was the opponent who had developed the BRUNCH ELECTRONIK trade mark[19].

   [16] Annexures FYMJ-15 and FYMJ-16 accompanying Jozic 2 and Exhibit PL-4 accompanying the Lefebvre declaration

   [17] Annexures FYMJ-12 to FYMJ-14 accompanying Jozic 2

   [18] Annexure FYMJ-17 accompanying Jozic 2

   [19] Annexure FYMJ-18 accompanying Jozic 2

5. In conclusion, I find that the opponent first used a substantially identical trade mark in Australia before the filing date of the Trade Mark in relation to services that are the ‘same kind of thing’. Therefore, the opponent has established the section 58 ground of opposition in relation to the services in class 41. When it comes to the remainder of the goods in classes 9, 25 and 28, which are goods that are often sold at music festivals. I note that the applicant provided evidence a year ago but has not provided any written submissions for hearing in support of its application. If certain claimed goods should remain outside of the above findings, I turn to the reasoning of the Delegate in Body Tease Inc v D & Y International Trading Pty Ltd[20]:

   The applicant has made no attempt to defend the application so that any attempt by me to differentiate between the opponent’s goods and the full range of goods covered by the application would be quite arbitrary.

   Of further relevance, Murphy J in Phone Directories Company Australia Pty Ltd v Telstra Corporation[21] noted the Court had the power under s 65(7) of the Act to reduce the breadth of the designated goods and services, but did not exercise this power “where no party argued that the Court should do so, or identified a principled basis upon which the Court should approach such a task.”

   [20] [2002] ATMO 102

   [21] [2014] FCA 373, [231]; See also Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015 FCAFC 156, [13]-[16].

6. The only recent correspondence has been from the applicant’s legal representative advising they would not be present at hearing or relying on any submissions. Taken all together, it stands that I find the ground of opposition established, therefore, I do not need to consider the other grounds which were argued at the hearing.

   Decision

7. 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:          Forlimitationssee section 6.

8. I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 58. Accordingly I refuse to register trade mark application no. 1771892.

   Costs

9. 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 applicant in terms of Schedule 8 of the Regulations.

   Bianca Irgang

   Hearing Officer

   Trade Marks Hearings

   28 September 2018