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Fratelli Fantini SpA v Beverley Harris

Fratelli Fantini SpA v Beverley Harris

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Case Copied 2 April 2019 33 min read

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TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Fratelli Fantini SpA to registration of trade mark application 1781312 (11) - Santini - in the name of Beverley Harris.

Delegate: Iain Campbell Thompson

Representation: Opponent: Phillips Ormonde Fitzpatrick
Applicant: Self-represented

Decision: 2019 ATMO 44
Trade Marks Act 1995
Section 52 opposition to registration – grounds under sections 42, 43, 44, 58, 60, and 62A. Grounds not established.
Background

In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) Beverley Harris (‘the Applicant’) has applied to register the trade mark which appears below:
Application No:         1781312
Priority Date:             5 July 2016
Goods:Class 11: Toilets; Bathroom fixtures; Bathroom furniture (sanitary ware); Bathroom installations; Fittings for the bathroom; Bathroom suites; Bath cabinets; Shower cabinets; Sanitary apparatus; Sanitary apparatus and installations; Bathroom basins (parts of sanitary installations); Bathroom wash basins; Fittings for basins; Basin taps; Taps (faucets); Water taps; Plugs for wash basins; Vanity unit tops being wash hand basins and surrounds (parts of sanitary installations); Vanity units incorporating basins (connected to the water supply); Sinks
(‘the Goods’)
Trade Mark:               Santini
(‘the Trade Mark’)
The Trade Mark was examined as is required by section 31 of the Act and advertised as accepted for possible registration on 1 December 2016 in the Australian Official Journal of Trade Marks.
On 30 January 2017, Fratelli Fantini SpA (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark.
On 28 February 2017, the Opponent filed a Statement of Grounds and Particular detailing grounds under sections 42, 43, 44, 58, 60, and 62A of the Act.
On 11 May 2017, the Applicant filed a Notice of Intention to Defend.
Thereafter, the parties have filed the following declarations in these proceedings:
Evidence in Support
Daniela Fantini, Managing Director and General Manager of the Opponent, made on 3 August 2017, with Exhibits DF 1 to DF 12;
Evidence in Answer
Beverley Margaret Harris, Sole Director and Owner of Harris Agencies Pty Ltd, trading as DevSpec, made on 28 September 2017, with Annexures A to G;
Evidence in Reply
Helen Nectaria Kavadias, Trade Mark Attorney, made on 4 January 2018, with Exhibits HNK-1 to HNK-3.
Both parties have been informed of their right to request to be heard or to make written submissions. Neither party has done either.
Now, in order that the Registrar may discharge her obligation under section 55 of the Act to decide the matter, it has been passed to me, one of her delegates, for my decision on the written record which is comprised of those materials mentioned in the foregoing paragraphs.
Onus and Relevant Date
The Opponent bears the onus of establishing a ground of opposition which is detailed in the Statement of Grounds and Particulars on the balance of probabilities.[1]
[1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006)…

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: [2019] ATMO 44
Decision Date: 2 April 2019

CaseChat Overview and Summary

Fratelli Fantini SpA (the Opponent) opposed an application for registration of a trade mark by Beverley Harris. The Opponent relied on its ownership of registered trade marks, specifically registration numbers 722352 and 1745058, both bearing the trade mark FANTINI. The dispute concerned whether the Opponent had established grounds for opposing the registration of the trade mark. The decision was made by Iain Campbell Thompson, a Hearing Officer for Trade Marks Hearings, based on the written record.

The legal issues before the Hearing Officer were to determine whether any of the grounds of opposition raised by the Opponent had been established on the balance of probabilities. The onus rested with the Opponent to prove its case. The relevant date for considering these grounds was the filing date of the opposed trade mark application, which also served as the priority date for sections 44 and 60 of the relevant Act.

The Hearing Officer considered the evidence filed by both parties, including declarations from Daniela Fantini for the Opponent and Beverley Margaret Harris for the applicant. The Opponent's evidence established its ownership of the FANTINI trade marks. However, the Hearing Officer concluded that the Opponent had not established any ground of opposition.

Consequently, the Hearing Officer decided that the trade mark application could proceed to registration one month from the date of the decision, unless the Registrar was served with a notice of appeal. In the event of an appeal, registration was to be deferred until the appeal was decided or discontinued, with the disposition of the application to follow any court order or direction.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

Thereafter, the parties have filed the following declarations in these proceedings:Evidence in SupportDaniela Fantini, Managing Director and General Manager of the Opponent, made on 3 August 2017, with Exhibits DF 1 to DF 12;Evidence in AnswerBeverley Margaret Harris, Sole Director and Owner of Harris Agencies Pty Ltd, trading as DevSpec, made on 28 September 2017, with Annexures A to G;Evidence in ReplyHelen Nectaria Kavadias, Trade Mark Attorney, made on 4 January 2018, with Exhibits HNK-1 to HNK-3. Both parties have been informed of their right to request to be heard or to make written submissions. Neither party has done either. Now, in order that the Registrar may discharge her obligation under section 55 of the Act to decide the matter, it has been passed to me, one of her delegates, for my decision on the written record which is comprised of those materials mentioned in the foregoing paragraphs.Onus and Relevant Date The Opponent bears the onus of establishing a ground of opposition which is detailed in the Statement of Grounds and Particulars on the balance of probabilities.[1][1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132] to [133]. The relevant date (‘the Relevant Date’) at which the grounds must be considered is the filing date[2] of the opposed application and I note that where sections 44 and 60 specify the “priority date” that is here the same as the filing date.Evidence[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592.The Opponent Ms Fantini’s declaration establishes that the Opponent owns the following Australian trade mark registrations:Registration No: 722352Priority Date: 21 November 1996Goods/Services: Class 7: Metal taps and fittings for industrial use; machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements; incubators for eggsClass 11: Metal taps and fittings for sanitary and hygienic apparatus and installations; apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposesTrade Mark: Registration No: 1745058IR No: 1002577Priority Date: 18 December 2015Goods/Services: Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, apparatus water taps; hygienic and sanitary facilitiesClass 20: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plasticsClass 24: Textiles and textile goods, not included in other classes; bed and table coversTrade Mark: FANTINI I will term the above trade marks “the Opponent’s Trade Marks”.

Decision

Reasons for decision

Section 55 of the Act relevantly provides:55Decision(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 a ground of opposition. The trade mark application may then proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application should be in accordance with the court’s order or direction.Iain Campbell ThompsonHearing OfficerTrade Marks Hearings2 April 2019

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.

Delegate:	Iain Campbell Thompson
Representation:	Opponent: Phillips Ormonde Fitzpatrick Applicant: Self-represented
Decision:	2019 ATMO 44 *Trade Marks Act 1995* Section 52 opposition to registration – grounds under sections 42, 43, 44, 58, 60, and 62A. Grounds not established.