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Ezy Auto 123 Pty Ltd v Ezyauto Pty Ltd

Ezy Auto 123 Pty Ltd v Ezyauto Pty Ltd

Case [2019] ATMO 125 19 August 2019

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TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Ezy Auto 123 Pty Ltd to registration of trade mark application number 1824446 (classes 35,37) - Ezyauto - in the name of Ezyauto Pty Ltd

Delegate:

Cristy Condon

Representation:

Opponent: Melissa Marcus, Counsel

Applicant: Andrew Sykes, Counsel

Decision:

2019 ATMO 125

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition ss 42, 58 and 60 – none established- trade mark will proceed to registration

Background
1. This decision is in respect of an opposition under section 52 of the Trade Marks Act 1995 (‘Act’) by Ezy Auto 123 Pty Ltd (‘Opponent’) to registration of the following trade mark:

Trade Mark No

1824446

Trade Mark

EzyAuto (‘Trade Mark’)

Applicant

Ezyauto Pty Ltd (‘Applicant’)

Filing Date

8 February 2017

Specification

Class 35: Car dealerships (vehicle sales) including prestige cars; advertising in relation to car sales; retailing of goods (by any means) including vehicles; vehicle dealerships (sales); advertising; advertising services provided over the internet; information, advisory and consultancy services in relation to the aforementioned services

Class 37: Servicing of cars including prestige cars; car maintenance services; tyre balancing, fitting, repair and re-treading services; car cleaning and car detailing services; car maintenance services; vehicle polishing; vehicle tuning; wheel alignment adjustment, wheel balancing and wheel repair services; information, advisory and consultancy services in relation to the aforementioned services

(‘Applicant’s services’)

The Trade Mark was examined as required under s 31 of the Act. Acceptance of the Trade Mark was advertised in the Official Journal of Trade Marks on 7 September 2017.
The Opponent filed a Notice of Intention to Oppose on 7 November 2017, followed by a Statement of Grounds and Particulars (‘SGP’) on 7 December 2017.
The Applicant filed a Notice of Intention to Defend the Trade Mark on 15 January 2018.
In due course the parties filed their respective evidence which consists of Evidence in Support, Evidence in Answer and Evidence in Reply.
By way of a letter to this Office dated 27 November 2019 the Opponent requested a hearing. A hearing was set down for 16 April 2019. The matter came before me, a delegate of the Registrar of Trade Marks in Canberra on the nominated date.
Prior to the hearing, both parties filed written submissions within the specified timeframes expressed in the Hearing Notice sent to the parties on 8 February 2019. The Opponent was represented at the hearing by Melissa Marcus of Counsel who made oral submissions which supplemented the Opponent’s written submissions prepared by Watermark Intellectual Property. The Applicant was represented at the hearing by Andrew Sykes of Counsel who made oral submissions supplementing his written submissions.
Grounds of opposition and onus
In the SGP the Opponent nominates grounds of opposition under ss 42, 58, 59 and 60. At the hearing and also in its written submissions, the Opponent states that it is not pursuing the s 59 ground of opposition.…

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.

Continue reading Ezy Auto 123 Pty Ltd v Ezyauto Pty Ltd

Details

AGLC: Ezy Auto 123 Pty Ltd v Ezyauto Pty Ltd [2019] ATMO 125
Case: [2019] ATMO 125
Decision Date: 19 August 2019

CaseChat Overview and Summary

The proceeding involved Ezy Auto 123 Pty Ltd (the Applicant) and Ezyauto Pty Ltd (the Opponent) before the Federal Court of Australia. The dispute concerned the Opponent's opposition to the registration of the Applicant's trade mark. The Opponent's primary argument was that it was the first user and therefore the owner of the trade mark "EASY AUTO 123" in relation to car dealerships, including servicing and finance, in Western Australia.

The court was required to determine the ownership of the trade mark, specifically whether the Applicant was the first user and thus the owner, or if the Opponent held that status. A preliminary issue also arose regarding the admissibility of a further declaration filed by the Applicant out of time, which the court allowed. The court also permitted the Opponent to raise a new argument under section 58 of the relevant Act, which concerns opposition to trade mark registration on the grounds that the applicant is not the owner.

The court reasoned that in the absence of fraud, the owner of a trade mark is generally considered to be the first person to use it, or a substantially identical trade mark, in the course of trade in Australia in relation to the designated goods or services, or goods or services of the same kind. This principle, established in cases such as *Carnival Cruise Lines Inc v Sitmar Cruises Ltd* and *Seven Up Co v OT Ltd*, formed the basis for assessing the competing claims of ownership. The court allowed the Applicant's late-filed evidence to avoid prejudice and, in exchange, permitted the Opponent's new section 58 argument, noting the Opponent's lack of objection under these conditions.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

The parties filed the following declarations as evidence in this proceeding:Evidence in Support Leanne Michelle Oitmaa, Watermark Intellectual Property Pty Ltd, dated 22 April 2018 (‘Otimaa’) together with Annexure LMO-1 Annexure LMO-1 is a copy of the declaration of David Alexander Rowland, Company Secretary and General Counsel of the Opponent, dated 26 October 2017 (‘Rowland 1’) together with Annexures DAR – to DAR 9 Evidence in Answer Demetrios Carakitsos, Director of the Applicant, dated 30 July 2018 (‘Carakitsos 1’) together with Annexures DC-1 to DC-12 Evidence in Reply David Alexander Rowland dated 8 October 2018 (‘Rowland 2’) together with Annexure DAR-1 and Confidential Annexures DAR-2 and DAR-3 Evidence filed out of time·Demetrios Carakitsos dated 5 April 2019 (‘Carakitsos 2’) together with Annexure DC-1 Preliminary matter – Evidence filed out of time and the Opponent’s new 58 argument13. On 5 April 2019 the Applicant filed a further declaration of Demetrios Carakitsos which in addition to correcting a spelling error in his surname appearing in the EIA, consists of an ASIC report for the Applicant (‘Carakitsos 2’). The Applicant’s written submissions address the reasons for consideration of this further declaration. During the hearing, I allowed the parties to make oral submissions on the admissibility of Carakitsos 2. I decided during the hearing to allow Carakitsos 2 into the proceedings under reg 21.15 of the Trade Mark Regulations 1995 and that I would also allow the Opponent’s new s 58 argument. I note here that the Opponent had no objection to my consideration of Carakitsos 2 provided I allow its new s 58 argument. The argument was not detailed in the SGP and I consider that not allowing Carakitsos 2 would be prejudicial to the Applicant in terms of the bona fide nature of its evidence. 14. In summary, this new s 58 argument is that Mr Carakitsos is the first user and therefore owner of the Trade Mark, not the Applicant. By contrast, the Opponent’s SGP argument claims the Opponent is the first user and therefore owner of the trade mark EASY AUTO 123 in relation to car dealerships (including car servicing and finance) in Western Australia. The remainder of the evidence filed in these proceeding is summarised as follows:Evidence In Support15. Rowland 1 is Annexure LMO-1 to Oitmaa and it states that the Opponent has applied to register the following trade marks (‘Opponent’s trade marks’): Section 58 of the Act provides:The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark. It is well established that in the absence of fraud, the owner of a trade mark is taken to be the first person to use it or another trade mark substantially identical to it,[20] in the course of trade in Australia in relation to the designated goods or services[21] or in relation to goods or services considered to be the ‘same kind of thing’ as the designated goods or services.[22] [20] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936. [21] Seven Up Co v OT Ltd [1947] HCA 59.[22] Re Hicks’ Trade Mark (1897) 3 ALR 75.

Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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Citations

AGLC Citation

Ezy Auto 123 Pty Ltd v Ezyauto Pty Ltd [2019] ATMO 125

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Cases cited in this decision · 14 of 14 shown

Monster Energy v USA Nutraceuticals Inc
[2017] ATMO 22 Para 10

…ce in Monster Energy v USA Nutraceuticals Inc[30]: [30] [2017] ATMO 22, [58]. Where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd , Beaumont J considered—in connection with the supe…
Apple Inc v Registrar of Trade Marks
[2014] FCA 1304 Para 8

…uthern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592, [595]. [4] See sections 6, 12, and 72 of the Act. [5] [2014] FCA 1304, [45].…
Food Channel Network Pty Ltd v Television Food Network GP
[2010] FCAFC 58 Para 8

…the ‘Relevant date’ at which to assess the grounds pressed at the hearing. Evidence [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32]. [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132]. [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Lt…
Pacific Publications Pty Ltd v IPC Media Pty Ltd
[2003] FCA 104 Para 10

…ing off. His Honour considered that: [31] [2003] FCA 104, [107]. The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, f…
Renaud Cointreau v Cordon Bleu International Ltee
[2001] FCA 1170 Para 10

…utation use of the Trade Mark would be likely to deceive or cause confusion. [24] Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170; ConAgra Inc. v McCain Foods (Aust) Pty Ltd (‘ Conagra ’) [1992] FCA 159. 51. This ground was particularised in the SGP as follows: [The] Opponent has acquired a…
Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd
[2001] FCA 683 Para 10

…[28] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 [28]. 63. The SGP claims that the Opponent relies on ss 18 of Schedule 2 to the Australian Consumer Law (‘ACL’) of the Competition and Consumer Act 2010 . The Opponent also submits that use of the Trade Mark would also amount to the pass…
McCormick & Company Inc v McCormick
[2000] FCA 1335 Para 10

…e test set out in McCormick & Company Inc v McCormick (‘McCormick’) [25] by Kenny J: [25] McCormick & Company Inc v McCormick [2000] FCA 1335 [81] (‘ McCormick ’) What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows: reputation ... 1. the estimation in which…
Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd
[1994] FCA 936 Para 2

…r services considered to be the ‘same kind of thing’ as the designated goods or services.[22] [20] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936. [21] Seven Up Co v OT Ltd [1947] HCA 59. [22] Re Hicks’ Trade Mark (1897) 3 ALR 75.…
Re Equity Access Pty Ltd v Westpac Banking Corporation
[1989] FCA 506 Para 10

…passing off would likewise fail.[32] [32] [1989] FCA 506, [40] (citations omitted). 66. Accordingly, the s 42(b) ground of opposition has not been made out. Decision…
Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd
[1982] HCA 44 Para 10

…Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ). 65. In the words of the hearing office in Monster Energy v USA Nutraceuticals Inc[30]: [30] [2017] ATMO 22, [58]. Where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL, nor the…
Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd
[1954] HCA 82 Para 8

…] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132]. [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592, [595]. [4] See sections 6, 12, and 72 of the Act. [5] [2014] FCA 1304, [45].…
Seven Up Co v OT Ltd
[1947] HCA 59 Para 2

…of thing’ as the designated goods or services.[22] [20] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936. [21] Seven Up Co v OT Ltd [1947] HCA 59. [22] Re Hicks’ Trade Mark (1897) 3 ALR 75.…
[1992] FCA 159
[1992] FCA 159 Para 10

…24] Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170; ConAgra Inc. v McCain Foods (Aust) Pty Ltd (‘ Conagra ’) [1992] FCA 159. 51. This ground was particularised in the SGP as follows: [The] Opponent has acquired a reputation in the trade mark EASY AUTO 123. [the] Opponent has used the trad…
Court’s own evaluation.See also Telstra Corporation Ltd v Phone Directories Company Australia Pty Ltd
[2015] FCAFC 156 Para 8

…e [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32]. [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132]. [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592, [595]. [4] See sections 6, 12, and 72 of the Ac…

Legislation cited in this decision · 5

Competition and Consumer Act 2010 (Cth)
1 mention (from Para 10)
Trade Mark Regulations 1995 (Cth)
1 mention (from Para 9)
Trade Marks Act 1995 (Cth)
1 mention
Trade Marks Regulations 1995 (Cth)
1 mention (from Para 6)
Trade Practices Act 1974 (Cth)
1 mention (from Para 10)

Trade Mark No	1824446
Trade Mark	EzyAuto (‘Trade Mark’)
Applicant	Ezyauto Pty Ltd (‘Applicant’)
Filing Date	8 February 2017
Specification	Class 35: Car dealerships (vehicle sales) including prestige cars; advertising in relation to car sales; retailing of goods (by any means) including vehicles; vehicle dealerships (sales); advertising; advertising services provided over the internet; information, advisory and consultancy services in relation to the aforementioned services Class 37: Servicing of cars including prestige cars; car maintenance services; tyre balancing, fitting, repair and re-treading services; car cleaning and car detailing services; car maintenance services; vehicle polishing; vehicle tuning; wheel alignment adjustment, wheel balancing and wheel repair services; information, advisory and consultancy services in relation to the aforementioned services (‘Applicant’s services’)