Expression in Colour Painters Pty Ltd v Jamie Helyar and Amber Callaway

[2022] ATMO 205

TRADE MARKS ACT 1995

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

Re:Opposition by Expression in Colour Painters Pty Ltd to registration of trade mark application 2136209 (37) – EC EXPRESSION IN COLOUR PAINTERS (Figurative) – in the name of Jamie Helyar and Amber Callaway

Delegate:

Nicholas Smith

Representation:

Opponent: Redchip Lawyers Pty Limited

Applicant: Self-represented

Decision:

2022 ATMO 205

Trade Marks Act 1995 (Cth) - Section 52 opposition: s 58 considered and established – registration refused

Background

1. This decision concerns an opposition brought by Expression in Colour Painters Pty Ltd (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Jamie Helyar and Amber Callaway (together ‘Applicant’): 

Application Number:

2136209

Filing Date:

24 November 2020

Services:

Class 37: House painting; Painting and decorating; Painting and decorating of buildings; Painting of buildings; Painting of furniture; Painting of metal surfaces; Painting of signs; Painting of vehicles; Painting or repair of signs; Painting, interior and exterior; Sign painting services; Spray painting; Spray painting automobiles

(‘Applicant’s Services’)

Trade Mark:

(‘Trade Mark’)

2.  Unless otherwise indicated, 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.

3.  Following the advertisement of the application’s acceptance for possible registration in the Australian Official Journal of Trade Marks, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars on 1 June 2021 (‘SGP’).  The SGP raised grounds of opposition under ss 42(b), 43, 58, 59, 60, 62(b) and 62A.  The Applicant filed a Notice of Intention to Defend on 26 August 2021. 

Evidence

1. The Opponent filed the following evidence in support of its opposition:

   ·Declaration made on 30 November 2021 by Daniel Michael Helyar, the Sole Director and Secretary of the Opponent, with Exhibits DH-1 to DH-19 (‘Helyar declaration’).

   5.  The Applicant did not file any evidence in answer.

   6.  The Opponent did not file evidence in reply.

   7.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  The Opponent requested that the matter proceed to a decision without hearing and paid the appropriate fee.  As a result the matter has been allocated to a delegate of the Registrar for a decision based on the written record.

   8.  I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 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. 

   The Opponent

2. The Opponent is an Australian company, established on 21 February 2018, that provides  painting services.  

   10.     The relevant claims/statements in the Helyar declaration can be summarised as follows:

   ·     Around March or April 2018 the Opponent engaged a design company to design a logo for its business.  At Exhibit DH-4 to the Helyar declaration is a copy of the 5 logo options designed for the Opponent including the Trade Mark.

   ·     In April 2018 the Opponent commenced trading (providing a broad range of painting services) under the Trade Mark, and has used the Trade Mark for a broad range of painting, advisory services and surface treatment services continuously since April 2018.

   ·     The Opponent has developed a substantial reputation in the Trade Mark including using it on invoices, on its website at its Facebook page, and on marketing collateral.

   ·     Jamie Helyar is the Declarant’s brother and was engaged by the Opponent as a contractor until he was terminated due to an argument.  Jamie and his partner (Amber Callaway) are currently estranged from the Declarant and other family members involved with the Opponent. 

   11.     The Exhibits to the Helyar declaration show that the logo designs created for the Opponent and examples of their use in connection with painting services that predate the filing date of the Trade Mark.  The Exhibits also contain Facebook posts confirming the relationship between the Applicant and the Opponent/Declarant.

   The Applicant

   12.     The Applicant has not filed any evidence and as such I have no information about it other than what is set out on the Register. 

   Grounds of Opposition, Onus and Standard of Proof

3. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 43, 58, 59, 60, 62(b) and 62A. To successfully oppose the application the Opponent needs to establish one of the nominated grounds. As will become apparent, the Opponent has successfully established a ground of opposition pursuant to s 58 in relation to all the Applicant’s Services. Consequently, it is unnecessary that I consider the remaining grounds. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

   14.     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 the filing date 24 November 2020 (‘relevant date’).[3]

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

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

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

   Discussion

   Section 58 – Applicant not owner of trade mark

4. Section 58 is reproduced below:[4]

   [4] In summarising the principles that apply with respect to s 58 I have paraphrased from Richard Khouzame v Melambada Pty Ltd (Unreported, Australian Trade Marks Office, 6 January 2017), [12] (Hearing Officer Wilson).

   Section 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.

   Note:For applicant see section 6.

5. The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier.  It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors.  These are:

   · that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[5]

   [5] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375 (Gummow J).

   · that the Applicant’s Services are the ‘same kind of thing’ as the services for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[6] and

   [6] Re Hicks’ Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

   ·     that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’).[7]

   [7] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

   17.     The ground based on s 58 was particularised in the SGP as follows:

   The Opponent has used the "Expression in Colour Painters" trade mark in the identical form to that depicted in Trade Mark Application No. 2136209 (Opponents Mark) in Australia in respect of a range of services in classes 37 and 40 since at least March 2018. These services relate to the services performed by a painter in painting interior and exterior of buildings, painting of furniture, signage painting, interior and exterior decorating, spray painting, preservative treatment of wood and timber and advisory services. Consequently, the Opponent is the true owner of the Applicant’s Trade Mark for those services and the Applicant’s Trade Mark should be rejected.

   18.     The evidence before me satisfies all 3 factors required under s 58.  The trade marks are substantially identical. The Opponent has been using its substantially identical trade mark in respect of a broad range of painting services since 2018, prior to the relevant date (the Applicant having provided no evidence of any actual use of the Trade Mark by it). The Applicant’s Services are the same kind of thing as the painting services for which the Trade Mark was used by the Opponent. 

   19.     I find that the Opponent has established the ground of opposition pursuant to s 58.

   Decision and Costs

6. I have found the Opponent has established the ground of opposition it raised pursuant to s 58.  As the delegate of the Registrar I accordingly refuse to register the Trade Mark. I direct that the refusal 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.

7. The Opponent 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 Applicant under s 221 in the relevant amounts under Schedule 8 of the Regulations.

   Nicholas Smith

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   29 November 2022