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

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.
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.
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’).
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
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]…

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: [2018] ATMO 156
Decision Date: 28 September 2018

CaseChat Overview and Summary

The applicant, 9197-3396 Quebec Inc, sought to register a trade mark, while the opponent, Ex-Centris Production, opposed this application. The dispute concerned whether the applicant was the rightful owner of the trade mark in question. The decision was made by Bianca Irgang, a Hearing Officer at Trade Marks Hearings.

The primary legal issue before the court was whether the opponent had established a ground of opposition under section 58 of the relevant Act, which states that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark. To succeed on this ground, the opponent was required to demonstrate that their trade mark was identical or substantially identical to the applicant's, that their goods and services were of the same kind as those claimed by the applicant, and that they had an earlier claim to ownership based on authorship and use of their trade mark prior to the applicant's filing date and any actual use.

The Hearing Officer found that the trade marks were substantially identical, noting that both comprised the same words and that any minimal stylisation in the applicant's mark was insufficient to overcome the resemblance. Furthermore, the opponent's use of its trade mark for the production and promotion of music festivals and on plastic cups was considered to be of the same kind as the goods and services claimed by the applicant. The opponent had also demonstrated use of its substantially identical trade mark in Australia before the convention priority date of the applicant's trade mark.

Consequently, the Hearing Officer determined that the opponent had met the onus of proof regarding the ground of opposition under section 58. Accordingly, the Hearing Officer refused to register the applicant's trade mark application. Costs were awarded against the applicant in accordance with the usual practice.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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 PL4Evidence in Reply·Declaration of Francois Ylija M Jozic ( ‘Jozic 2’) dated 5 December 2017 with annexures FYMJ-10 to FYMJ-18DiscussionSection 58 – Applicant not the owner of the trade mark Section 58 of the Act provides:58 Applicant not owner of trade markThe registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark. 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] 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] The respective trade marks to be compared are as follows: 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 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

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: Forlimitationssee section 6. 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 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 IrgangHearing OfficerTrade Marks Hearings28 September 2018

Ratio Decidendi

Legal Principle Established

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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.