Gene Schirripa Anthony Bomball and Daniel Turner v MMJ Holdings Pty Ltd

[2017] ATMO 138

TRADE MARKS ACT 1995

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

Re:Opposition by Gene Schirripa, Anthony Bomball and Daniel Turner to registration of trade mark application 1739814(35) - ORIGINAL GENT - filed in the name of MMJ Holdings Pty Ltd.

Delegate:	Adrian Richards
Representation:	Opponent: Self represented Applicant: Self represented
Decision:	2017 ATMO 138 Opposition under section 52 of the Trade Marks Act 1995 (Cth) – grounds of opposition under sections 59 and 62A pressed – no grounds of opposition established – trade mark to proceed to registration

Background

1. This decision on the written record concerns an opposition to registration of a trade mark under s 52 of the Trade Marks Act 1995 (Cth) (‘the Act’).

2. MMJ Holdings Pty Ltd (‘the Applicant’) filed an application for registration of a trade mark with the following relevant details:

   Application number:              1739814

   Trade mark:  Original Gent (‘the Trade Mark’)

   Classification of services:     Class 35: Retailing of goods (by any means)

   Priority date:  8 December 2015 (‘the Relevant Date’)

3. The Trade Mark was advertised as having been accepted for possible registration on 28 April 2016. Gene Schirripa, Anthony Bomball and Daniel Turner (‘the Joint Opponents’) filed a Notice of Opposition to the registration of the Trade Mark on 12 May 2016. The Joint Opponents filed a Statement of Grounds and Particulars (‘SGP’) on 10 June 2016. This office sent the Applicant a copy of the SGP, who in turn replied with a Notice of Intention to Defend the opposition on 26 July 2016.

4. The Joint Opponents filed evidence in support, and this office gave the Applicant an opportunity to file evidence in answer, which it did not do. This office then gave the parties an opportunity to request to be heard in person on the opposition, or to file written submissions. Neither party took up either of these options. The opposition has since been given to me, a delegate of the Registrar of Trade Marks, to decide.

Evidence

1. The Joint Opponents filed the following declaration as their evidence in support:

   Declaration of Gene Schirripa, Anthony Bomball and Daniel Turner, made 19 September 2016, with annexures 1 to 9.

2. The declaration is unusual in that it purports to be a sworn statement made by more than one person. This anomaly has no bearing on the outcome of this decision, so I have simply read this document as three identical declarations.

3. The Joint Opponents’ declarations are chiefly concerned with offering submissions on the grounds of opposition that were nominated in the SGP. The annexures consist of:

   ·printouts from a number of government websites concerning business name, company name and trade mark registrations/applications made by the Applicant

   ·an email from a website hosting service to the Joint Opponents

   ·a screenshot from inside the account for the domain originalgent.com.au

   ·an ‘Instagram’ screenshot marketing the Joint Opponents’ enterprise ‘Original Gent’

   ·an email from the Joint Opponents to some workshop attendees of unknown number or identity

   ·a ‘proposal document’ from the Joint Opponents to potential suppliers

   ·an instant message conversation between two of the Joint Opponents, and

   ·a screenshot of a website said to show the number of subscribers that the Joint Opponents’ enterprise had at a particular date

Grounds and Onus

1. The SGP nominates grounds of opposition under ss 59 and 62A of the Act. The onus is on the Opponent to satisfy me on the balance of probabilities that it has established a ground of opposition.[1] The rights of the parties are to be determined as at the Relevant Date.[2] To succeed, the Opponent need only establish one ground of opposition.

Reasons

[1] Pfizer Products Inc v Karam (2006) 219 FCR 585, 591-4 [16]-[26]; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

Section 59

1. This provision is set out below:

   59 Applicant not intending to use trade mark

   The registration of a trade mark may be opposed on the ground that the applicant does not intend:

   (a)to use, or authorise the use of, the trade mark in Australia; or

   (b)to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services specified in the application.

   Note:           For applicant see section 6.

2. The act of applying for registration of a trade mark brings with it a presumption of an intention to use it.[3] If the Joint Opponents makes out a prima facie case of a lack of intention to use, the evidentiary onus may shift onto the Applicant to show its intention to use the Trade Mark at the relevant date.[4]

   [3] Suyen Corp v Americana International Ltd (2010) 187 FCR 169, 199 [197].

   [4] Ibid 198 [190].

3. In support of their prima facie case, the Joint Opponents’ declarations submit that the Applicant ‘has not registered a business under the name ‘Original Gent’ and has not undertaken any commercial activity under this name…’ and that the Applicant’s intention ‘was to impair the commercial viability of a potential competitor to the [A]pplicant’s registered business “the Groomsmen AU.”’ Who this potential competitor was has been left unstated, though reading between the lines, I believe the Joint Opponents mean their enterprise.

4. The documents said to support these submissions are a screenshot from the Australian Business Register record of the Applicant (‘the ABR Record’), and from the Australian Securities and Investments Commission for the business name ‘The Groomsmen AU’ (‘the ASIC Record’). The ABR Record shows that the Applicant is a company that has been registered since early 2015, and that it has an associated business name ‘The Groomsmen AU’. The ASIC Record shows that the business name ‘The Groomsmen AU’ is cancelled.

5. These documents show that at the Relevant Date the Applicant was a registered corporate entity that happened to have had a cancelled business name. This says nothing about its trading activities or its intentions. I have been unable to draw from this pair of documents any indication that the Applicant might not have had at the Relevant Date an intention to use the Trade Mark.

6. The Joint Opponents have failed to discharge their onus in relation to the s 59 ground of opposition, and I find that it has not been established.

Section 62A

1. The text of this ground of opposition is reproduced below:

   62A Application made in bad faith

   The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

2. The test to be applied combines subjective and objective elements. That is, taking into account the Applicant’s knowledge at the Relevant Date, in the circumstances, would the decision to make this application ‘be regarded as in bad faith by persons adopting proper standards’?[5]

   [5] Fry Consulting Pty Ltd v Sports Warehouse (No 2) (2012) 201 FCR 565, 598 [167].

3. The fact that the Joint Opponents had set up a website for their ‘Original Gent’ enterprise, posted on ‘Instagram’ and emailed suppliers prior to the Relevant Date provides little insight into the Applicant’s subjective knowledge at the Relevant Date. I do not think it would be sound to infer from these efforts that the Applicant might or ought to have known of the Joint Opponents’ ‘Original Gent’ enterprise at the Relevant Date. The Joint Opponents have failed to discharge their onus in relation to the s 62A ground of opposition, and I find that it has not been established.

‘A discretion to remove’

1. The Joint Opponents’ declarations refer to a third ground of opposition – a ‘discretion to remove the trademark.’ The SGP did not refer to any such ground of opposition, so strictly speaking this should not be considered now. However, I would just note briefly that the Joint Opponents have referred to a discretion under Part 4 of the Act. It appears that they have confused the Registrar’s discretion not to remove a trade mark from the Register following an application for removal made under s 92 of the Act. The present proceeding is not a removal proceeding, but rather an opposition under s 52 of the Act.

Decision

1. Section 55 of the Act relevantly provides:

   55 Decision

   (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.

2. The Joint Opponents have failed to establish a ground of opposition, so I have decided to register the Trade Mark. 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 withdrawn or discontinued. Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

Adrian Richards
Hearing Officer
Trade Marks Hearings
9 November 2017