Funtastic Ltd v Albasio La Pegna

[2005] ATMO 66

TRADE MARKS ACT 1995

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

Re:Opposition by Funtastic Limited to registration of trade mark applications 926890(43), 927644(29)(30) FUNTASTICO proceeding in the name of Albasio La Pegna.

Delegate:

Ian Thompson

Representation:

Opponent
Kelvin Lord of Lord & Company
Applicant
Stephen Friend of Wray & Associates.

Decision:

1.s52 opposition: section 60 – opposition not established

2 Costs ordered against opponent.

Background

1.   Albasio La Pegna ('the applicant') of Subiaco, Western Australia has filed applications to register a trade mark, current details of which are:

App No:  926980
Filing Date:  12 September 2002
Acceptance Date:  23 January 2003

Services:Class: 43  Services for providing food and drink; restaurant and bar services

Trade Mark:  FUNTASTICO

App No:  927644
Filing Date:  18 September 2002
Acceptance Date:  30 January 2003

Services:Class: 29  Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats; soup, broth, bouillon and concentrates and dried preparations thereof, sausages, salami and other preserved meats, pate, vegetable based spreads and dips, tomato puree, dried and preserved herbs

Class: 30Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice; pizza, pasta and pre-prepared pasta dishes, pies

Trade Mark:  FUNTASTICO

2.   On 22 April 2003, Funtastic ('the opponent') of South Oakleigh, Victoria, filed Notices of Opposition (‘the Notices’) to the registration of the trade mark.  The Notices cite most of the grounds available under the Trade Marks Act 1995.

3.   Evidence in support was served and filed, as was evidence in answer, as allowed by the Act and Regulations thereto. 

4.   A hearing was held before me, as a delegate of the Registrar of Trade Marks, in Perth, on 18 August 2005.  Stephen Friend of Wray & Associates represented the applicant.  The opponent relied on written submissions by its solicitor and did not appear.

Evidence

5.   The evidence comprises the following declarations:

Declarant	Position Known as	Date Made	Exhibits
Evidence in Support
Tony Rebeiro	Chief Finance Officer, opponent Rebeiro	30 January 2004	TR-1
Peter Dalimore	Owner of Stanbridges Hobby Shop Dalimore	12 February 2004
Darren J Neil	Owner of a Toykingdom shop Neil	13 February 2004
Jim Rothwell	Owner of Mandurah Toyworld Rothwell	20 February 2004
Paul Parker	Owner of a Hobbyco shop Parker	Undated
Richard Blance	Owner of Burswood Chocobel Blance	Undated
Nicholas David Orloff	Managing Director of Variety Toys Orloff	10 February 2004
Nick Maggacis	Owner of Mr Toys Maggacis	25 February 2004
Evidence in Answer
Michael Caridi	Principal of Caridi Partners, CPA Caridi	21 September 2004	A-1 to A-2
Stephen Robert Friend	Attorney for applicant Friend	22 September 2004	SRF-1 to SRF-3

The Evidence

1. The opponent’s leading declaration shows it to be a large wholesaler of goods which are predominantly toys, games, playthings, hobby products clothing and homewares.  While the opponent claims to have used its trade mark FUNTASTIC on confectionery before the filing date of the opposed application, this claim is not clear as its appears to have been through a subsidiary company and it is further not clear to me that this purported use was before the filing date of the opposed application.

2. This claim may be further diluted by the observation that the opponent appears (on the evidence before me) to have used its company name in relation to all of its business dealings rather than a trade mark.

3. While the opponent does have a registration of the trade mark FUNTASTIC which precedes the date of the opposed application, this trade mark is registered in classes 18, 25 and 28 and thus does not conflict with the goods or services of the opposed applications.  Additionally, neither is there any formal evidence relating to the use of the trade mark by the opponent.  There is no physical evidence of product bearing the trade mark, product labels, swing tags or such like.  Neither are there any details of sale figures or advertising or promotional expenditure undertaken by the opponent in relation to its FUNTASTIC trade mark as it might relate to a wholesale serve and no dockets, receipts or invoices, stationery, or even photographs of warehouses bearing the trade mark.

4. The bulk of any sales of goods which might be inferred with any certainty are under the trade marks of other traders.  While the opponent is referred to on its Internet website, in evidence, as Funtastic Limited, there appears to be no other use of this company name as a trade mark and there is no claim on the website that the word Funtastic is a trade mark whether as part of the company name or otherwise.

5. Thus, when declarants such as Dallimore, Rothwell, Parker, Blance, Orloff and Maggacis attest to dealing with the opponent company, it is uniformly with reference to Funtastic Limited, rather than by reference to a trade mark.  And, when these trade declarants do mention the trade mark FUNTASTIC, it is in a context where they may be referring to a company name or be under the belief that a company name is necessarily a trade mark.

   Comment

6. It is not the function of the present decision to determine whether there has been any use of the trade mark FUNTASTIC by the opponent – it is sufficient for the purposes of this decision to record that, whatever the use of the opponent’s putative trade mark has been, the evidence of such use at present before me will not support any of the grounds nominated on the Notices and/or pursued in the written submissions of the opponent.

7. If the opponent’s reputation had been established by the evidence, the only use that the opponent might have made of the trade mark on goods which could be related to the goods and services of the applicant is in relation to ‘confectionery’.  However, the opponent has not evidenced such use either in relation to wholesale or retail sales.

8. The written submissions are of an extremely general nature and do not mention a specific ground of opposition although they might be characterized as going to section 60 of the Act.  These submissions make a number of general assertions which are not supported by either the evidence or the law.  For instance, the opponent states that its reputation is unchallenged and thus must be accepted.  While the evidence does not establish the opponent’s reputation, it is not the function of this hearing officer to consider it in relation to section 60 proceedings – what I am to consider is, rather, the reputation of the opponent’s trade mark.

9. The onus in these proceedings is quite clearly on the opponent to establish its opposition to my satisfaction via evidence and I am unwilling and unable to go beyond the evidence to make good any shortfalls therein.

   Decision

   15.  As the reputation of its trade mark before the priority date is the pivot around which the other considerations under section 60 swing, the opponent cannot establish its ground under this section of the Act.

   16.  Section 55 of the Act provides:

   55. Unless the proceedings are discontinued or dismissed, 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.

   17.  No ground of opposition has been established and the trade mark application may 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.

   Costs

   18.  Costs may follow the event and I order costs against the opponent at the official scale.

   Ian Thompson
   Hearing Officer
   Trade Marks Hearings
   7 November 2005