Trade Marks Act 1995 (Cth) – s 33 proceeding – s 44 and reg 4.15A of the Trade Marks Regulations 1995 (Cth) considered – grounds for rejection established in relation to a subset of goods and services – evidence considered but not sufficient – opportunity to amend – goods and services amended – trade mark application accepted

Background

This matter concerns an application filed by Geelong Grammar School Limited (‘Applicant’) to register the following trade mark:
Trade mark:  Timbertot (‘Trade Mark’)
Number:  2290393 (‘Application’)
Priority date:  1 August 2022
Specification:[1]                  Class 9: (including) audio visual multimedia and teaching apparatus and instruments in this class; downloadable educational material including webcasts, podcasts, audio visual files, music files, software programs and mobile or web-based software applications; software
[1] An indicative specification is provided. The complete specification is reproduced in Annexure A to this decision.
Class 16: (including) educational materials; printed matter and printed publications; articles of stationery
Class 18: (including) bags, including school bags, book bags and sports bags; luggage; umbrellas
Class 25: (including) apparel (clothing, footwear and head gear), including without limitation, school clothing, school footwear and school head gear for students, children and young people
Class 28: (including) educational toys, playthings and sporting goods in this class; sporting apparatus
Class 35: (including) wholesaling and retailing of goods (by any means); retail services; distribution of goods (not being transport services); career planning services
Class 36: (including) fundraising services; charitable services, namely financial services; leasing of accommodation; preparing reports and other business documents in relation to the above services
Class 41: (including) educational services including schooling; provision of library services; arranging, conducting and making available online training sessions, workshops, seminars, courses, lectures, exhibits and conferences; publication of printed educational materials, statistics, research and information; training in the care of children; online publications (non-downloadable)
Class 43: (including) boarding house accommodation and hospitality services; arranging of accommodation for students; hospitality services (food and drink)
(‘Claimed GS’)
The Application was examined as required by s 31 of the Trade Marks Act 1995 (Cth) (‘Act’) and an examination report issued to the Applicant raising, inter alia, grounds for rejection under s 44 of the Act in respect of the following trade marks (collectively ‘Citations’):
Trade mark:  TIMBER TOTS (‘59 Mark’)
Number:  1813159
Priority date:  1 December 2016
Specification:[2]                  Class 35: charitable services, namely organising and conducting volunteer programmes and community service projects
[2] An indicative specification is provided. The complete specification is reproduced in Annexure B to this decision.
Class 39: (including) arranging of excursions; organisation of…

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 Geelong Grammar School Limited

Details

AGLC: Geelong Grammar School Limited [2024] ATMO 208
Case: [2024] ATMO 208
Decision Date: 17 June 2024

CaseChat Overview and Summary

Geelong Grammar School Limited sought to register the trade mark "TIMBERTOT" across a range of classes including educational services, clothing, and retail. The application was opposed by Timbertop Pty Ltd, which argued that the proposed mark was deceptively similar to its own registered trade mark "TIMBERTOP" and that registration would likely cause confusion among consumers. The matter came before Nicholas Barbey.

The primary legal issue before the court was whether the proposed trade mark "TIMBERTOT" was deceptively similar to the registered trade mark "TIMBERTOP" for the purposes of the *Trade Marks Act 1995* (Cth). This required an assessment of the visual, aural, and conceptual similarities between the two marks, as well as consideration of the goods and services for which registration was sought and the likely perception of the relevant public.

In determining deceptive similarity, the court applied the established principles of trade mark law, which involve comparing the marks as a whole and considering the degree of resemblance and the likelihood of confusion. The court noted that while the marks shared the common element "TIMBER," the addition of "TOT" to the applicant's mark created a distinct difference. Considering the overall impression conveyed by each mark and the nature of the goods and services, the court found that the differences were sufficient to avoid a likelihood of deception or confusion in the minds of the relevant consumers.

The court therefore found that the proposed trade mark "TIMBERTOT" was not deceptively similar to the registered trade mark "TIMBERTOP" and ordered that the opposition be dismissed.

Orders